As our society’s relationship with technology continues to grow and evolve, many new inventions utilize software to perform certain functions. Inventors have a vested interest in protecting their innovations and may wonder if they can patent software. Unfortunately, the answer is not straightforward. There are certainly ways to patent these inventions, but it often requires the patent to be written in a particular way to focus on the novel aspects of the design and how it improves computing functionality. If you do not carefully word your patent, your invention will likely be deemed unpatentable. Because there is a great deal of nuance involved in these patent applications, it is highly recommended that you seek the guidance of an experienced patent lawyer if you have a software-based invention you are trying to protect.

How Has the Supreme Court Impacted the Ability of Inventors to Patent Software?

In the 2014 Supreme Court case Alice Corp. v. CLS Bank, the plaintiff argued that the defendant had infringed upon their patents for software that acted as an intermediary for monetary transactions. The Supreme Court ruled against the plaintiff, stating that the plaintiff’s software was inherently unpatentable. This unpatentability stems from the software in question being an abstract idea that did not have any elements described in its patent application that could transform it into a novel idea worthy of a patent.

This has somewhat muddied the waters of software patentability because the ruling did not clearly define what qualifies as an “abstract idea” in a patent application. It also did not specify what elements are required in an application to transform an abstract idea into something patentable. Lower courts are still hearing cases regarding these issues. As rulings are made, there may be more clarification, but for now, the law is a bit murky and subject to interpretation and changes.

Under What Circumstances Can Software Be Patented?

So, where does that leave inventors who utilize software? Under current law, software-based inventions remain eligible for a U.S. patent. However, they must meet certain specifications to be approved. The two main questions considered when determining a software patent’s eligibility are:

● Is the invention an abstract idea?
● If it is an abstract idea, does the patent application include details that transform it into a new or novel technology that could be considered patentable?

Because the concept of an abstract idea is critical to this determination process, let’s delve into what makes software more than just an abstract notion. Typically the difference between an abstract idea and a patentable invention is whether it makes a tangible improvement to a computer’s functionality. If you simply have an idea for a way to make a computer perform a generic process, such as calculating a mathematical algorithm, then it probably isn’t patentable. But if you focus your patent on how your invention solves some of the challenges of using a computer to do a particular thing in an unconventional way, then it may be considered eligible for a patent.

Can Your Description of Your Invention Impact Its Patentability?

Semantics are critical when it comes to writing software patent applications. How you describe your invention can be the difference between a successful and an unsuccessful application. Because you don’t want your invention to be termed an abstract idea, it is crucial to focus your patent application on the technical challenges it is overcoming rather than the benefits the end user will gain from using it. Software patent applications often require considerable technical detail to prove that the invention is not abstract. It is generally not enough to describe what your invention does. You must explain what difficulties have existed previously in executing this process and how your invention improves upon this by using an unconventional solution or using existing components in an unconventional way.

The other challenge of drafting a successful patent application for software is figuring out the scope of your patent. A patent provides protection to clearly defined intellectual property, but determining those boundaries when it comes to software can be tricky. If your scope is too wide and preempts every application of the software, it will likely be considered too abstract to be patentable. But if the scope is not broad enough, it doesn’t provide you with enough protection to fight against infringement on your intellectual property. An experienced patent lawyer can help you establish a scope for your invention which meets your needs but still retains patent eligibility.

Why Hire a Patent Lawyer When Seeking a Patent for Your Software Invention?

Applying for a software patent requires an inventor to carefully determine how they will present their invention so that it meets the criteria for patentability while still securing them the critical intellectual property protection they require. This is a delicate balancing act, made more difficult by the fact that the law is currently in flux. Enlisting the services of a skilled patent lawyer can be vital to your patent application’s success. Patent lawyers stay current on the newest developments in software patentability and can use their vast knowledge of the technical aspects of writing a strong patent application to your advantage.

Due to the necessity of including within a software patent application both detailed technical descriptions of the invention and the inherent computing difficulties the invention overcomes, it may feel daunting to find a lawyer capable of explaining your complex invention in a clear and concise manner. Our law office has assisted many other software inventors with their patent application process. You can contact us for a complimentary 20-minute patent needs assessment to see if we are a good fit for you.