Typically, most computer innovations relate at least in some way to software, which is at the very core of the challenge facing patent attorneys and innovators today. It is the software that directs the computer, or more generally a machine, to do unique and often wonderful things. Indeed, it is the software that provides the innovative spark, not the machine on which the software operates. Still, for reasons that are hard to understand and even harder to explain the courts, specifically the United States Supreme Court and the United States Court of Appeals for the Federal Circuit, continue to exalt the hardware at the expense of the true innovation found in the software.
If you remove all of the software from your smart phone suddenly the phone is not terribly smart and would rather approximate a paperweight more than anything else. The same can be said about your computer, of course, but also about your automobile. If you were to instruct your mechanic to remove all the software from your vehicle you would have one very large, expensive piece of junk that wouldn’t start and wouldn’t be at all useful to get from point A to point B. Yet, despite this reality, the courts continue to exhibit a thoroughly misguided understanding of the core of the innovation at issue.
The Patent Office continues to issue software patents, at least in some Art Units, but the sad reality is applicants are virtually assured uneven and unequal treatment of their patent applications depending upon the patent examiner assigned to the case. Still, at least in theory, software remains patent eligible. At least some patents are issued covering software related inventions each week, and no one seriously believes software will become patent ineligible. Eventually either the courts or Congress will come to their senses and realize that the digital economy requires digital innovation, and software is at the heart of those technological advances in the digital age.
In the meantime, patent professionals and innovators need to figure out how to responsibly move forward. If filing a patent application is desirable a great deal of information must be included in that patent application in order to have any chance to overcome the numerous hurdles that currently stand between the applicant and a viable issued patent.
The chief hurdle is the Supreme Court’s decision in Alice v. CLS Bank, which has infused a great deal of uncertainty into the law of patent eligibility. But even if the software related innovation is patent eligible there are other meaningful hurdles, particularly obviousness (i.e., 35 U.S.C. 103) and adequate written description (i.e., 35 U.S.C. 112).
The good news is that any patent application filed now covering a software related innovation will undoubtedly sit awaiting a First Office Action on the Merits for at least two years, more likely three years. Even then the prosecution will drag on for another 18 to 24 months thereafter. That means that the law that will be used to evaluate the software patent applications filed today has not yet been written by the courts. That is both good news and bad news. It means the draconian interpretations of the Supreme Court’s Alice decision should have largely subsided by then, perhaps we will have Congressional action once and for all settling the matter, but it also means that the standard used by examiners is one that cannot be known presently. For that reason it is absolutely critical that software related innovations describe the technology to the greatest extent possible, focusing on as much that is tangible as possible. In short, the software patent application you file today is not your father’s software patent application.
In order to maximize the likelihood of obtaining a favorable result at the Patent Office, here are a few things that applicants must absolutely keep in mind:
- Real flow charts are essential! We have all seen the drawings in software patents where there are four boxes connected together to form what is really a line from top to bottom of the page. Those were likely never useful, not at least if it was the only illustration, but today illustrations like that are really a waste. If your computer implemented method is A to B to C to D then don’t waste your time. Save your money, because you aren’t going to get a patent anyway. What you need are extremely detailed flow charts that at a minimum teach the core algorithms.
- Describe the all the tangible components to the greatest extent possible. As Figure 14 of U.S. Patent No. 8,515,829 demonstrates, in order for this computer implemented process (invented by Google) to be carried out there are a great number of tangible components that are needed.
- Describe hardware alternatives to accomplishing the computer implemented processes. After all, whether you implement a solution in hardware or in software is largely a design choice. Those familiar with the technical reality of software also know that any computer implemented process that can be accomplished using software can also be accomplished using logic gates. Indeed, logic gates are foundation for all digital electronic circuits and microprocessor based systems. Thus, software can be explained on its core level as a process for manipulating logic gates.
- Don’t be afraid to make the technical disclosure long, dense and difficult to read, at least for those without technical training. In my opinion one of the biggest reasons the Supreme Court has embarked upon this path to render much innovation patent ineligible is because they actually understand the inventions in question. In Bilski, for example it was little more than thinking, observing and acting. In Alice they convinced themselves it was just little more than ledger accounting. Dumbing down the technical disclosure so even a Justice of the Supreme Court can understand is a mistake, at least in my humble opinion.
Of course, there is more to discuss than any single article could ever cover. With that in mind I will host a free webinar discussion on best practices for drafting software patent applications post-Alice. Joining me will be Jennifer Bailey, a patent attorney specializing in all aspects of patent practice with a heavy focus on computer software, and Dr. Kate Gaudry, a patent attorney focuses on the use of analytics to identify winning prosecution strategies.
In addition to taking your questions we will address the following:
- Articulating a patent eligible invention
- Claiming techniques for software
- Appropriately disclosing the algorithms
- Non-publication requests at filing
- Anticipating, and overcoming, inevitable rejections