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Software Inventions Eligibility for Patenting

Wording of Software Patents: It Matters

 

Given the importance, and level of difficulty, of obtaining a software patent, an important topic is whether the wording of the application for a patent (a somewhat complex document) is important.  In other words, is the way that a patent application is written pertinent to whether or not a software invention is deemed eligible for a patent?  The short answer is yes.[1]   

Many software engineers often have the impression that the technological uniqueness of their inventions is the only thing that matters for obtaining a software patent; that is understandable given the hard work they had to put into their innovations.  But if their innovations are not sufficiently explained in a way which comports with the recent patent eligibility requirements, they may possibly not be granted patents.

As an example, a recent ruling by the Federal Circuit Court of Appeals invalidated a patent on the basis that it was not directed toward patent eligible subject matter and dismissed the patent owner’s argument that the invention “embodied a concrete technological innovation” on the basis that the patent itself did not contain language that described the “specific means” for performing the corresponding function.[2]  The rest of the patent may have possibly described the invention in enough adequate detail, but the portion that mattered for software patent eligibility analysis did not. 

Why couldn’t the patentee just add some language to the patent to provide the clarification within the patent itself?  After all, the inventors worked hard on their software inventions and ostensibly should be able to add some wording to clarify some details of the inventions’ inner workings.  That logic may be somewhat intuitive but is not the approach typically taken by the U.S. Patent & Trademark Office (“USPTO”). 

For instance, the USPTO manual,[3] which provides guidance to its Examiners during the examination process of a patent, explains that the four corners of the original patent filing are used: “[s]uch a review is conducted from the standpoint of one of ordinary skill in the art at the time the application was filed.”   

 


[1] As this article is provided for informational purposes, the author is not providing legal advice with respect to the patent eligibility merits of any particular software invention.  Legal advice for a particular software invention may be obtained by contacting the author directly.  

[2] Affinity Labs of Tex., LLC v. Amazon.com Inc., No. 2015-2080, slip op. at *7 (Fed. Cir. 2016).

[3] Manual of Patent Examining Procedure, § 2163(II)(A)(2).

 

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