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Software Inventions Eligibility for Patenting

Technical Knowledge for Software Patents

A patent may be thought of as having a legal component, which describes what cannot be copied, and a technical component, which describes how to actually make the invention.  As the patent eligibility requirements for software patents are currently somewhat stringent, a question arises as to what can be done from a technical perspective to improve the quality of a patent application for examination by the U.S. Patent & Trademark Office (“USPTO”).

In the context of software patents, some recent appellate court rulings highlight the importance of emphasizing the technical aspects of a software invention to help comply with patent eligibility requirements.  For example, a recent appellate court ruling explained that one part of the patent eligibility analysis for software patents involves determining whether a software patent application/software patent is “directed to an improvement to computer functionality versus being directed to an abstract idea.”[1]  

An improvement to computer functionality is essentially an improvement to the way a computer operates (e.g., increased processing speed) rather than an improvement to an idea by automating what was previously performed by humans (more of an abstract idea).  Some examples of improvements to computer functionality were provided by the aforementioned appellate court ruling: “increased flexibility, faster search times, and smaller memory requirements.”[2]   

In other words, describing the technical details of a software invention’s operation may be a deciding factor as to whether or not a software patent application is ultimately granted as a U.S. patent.  For example, the crux of a software invention may have nothing to do with search speed, but the byproduct of operating that software invention may result in a faster search time. 

At Patent Ingenuity, P.C., technical knowledge of software engineering is used in conjunction with legal knowledge to pinpoint and emphasize the strongest aspects of a software invention.[3] 


[1] Enfish, LLC v. Microsoft Corp., No. 2015-2044, slip op. at *11 (Fed. Cir. 2016).

[2] Enfish at *15.

[3] The information provided herein is not intended to provide any guarantee, warranty, or prediction of success in obtaining a software patent.  Results can vary from client-to-client and project-to-project.


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