Navigating the Evolving Landscape of Drafting Software Patents

Navigating the Evolving Landscape of Drafting Software Patents in the Wake of KOM Software Inc. v. NetApp, Inc.

In the ever-changing realm of Patent Law, drafting software patents have become an increasingly complicated area of practice. The recent decision in KOM Software Inc. v. NetApp, Inc. by the District of Delaware has reignited discussions surrounding the patentability of software under the Alice test, a two-step framework used to determine whether an invention falls within the categories of patent-eligible subject matter.

Background of the Case

KOM Software Inc., the plaintiff, asserted patent infringement claims against NetApp, Inc., alleging that NetApp’s data storage systems infringed on KOM’s patents related to managing access to files. NetApp moved for judgment on the pleadings, arguing that KOM’s patents were invalid under 35 U.S.C. § 101, which excludes from patentability “abstract ideas, laws of nature, or natural phenomena,” as well as processes that merely apply those abstract ideas.

The Court’s Decision

The District of Delaware granted NetApp’s motion in part, finding that some of KOM’s asserted claims were directed to patent-ineligible subject matter under the Alice test. Applying step one of Alice, in cases involving computer technology, the court considdered “whether the focus of the claims is on the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an `abstract idea’ for which computers are invoked merely as a tool.” Enfish, 822 F.3d at 1335-36; see also TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1293 (Fed. Cir. 2020). Claims  directed to “a technological improvement” which are discussed as being the advantage in the drafted software patent application offered through technological improvements identified by the specification are not merely an abstract idea.

The court determined that claims in the ‘243 patent reciting the use of a trap layer, which the specification discloses as the prinicipal means for solving the problems of associated with the prior art.  Thus the software patent application claims were plainly directed to an improvement in the functioning of the computer and not to an independently abstract process that merely invokes computers as tools.  See Enfish, 822 F.3d at 1338 and Elec. Power Grop., 830 F.3d at 1354.

Implications for Software Patents

The KOM Software decision serves as a reminder that software patents must be carefully drafted to overcome the challenges to patentability under the Alice test. While the decision does not alter the existing framework, it reinforces the need for careful drafting of software patent claims to ensure that they are not directed to abstract ideas and that they incorporate an inventive concept that is more than the abstract idea itself.

Guidance for Software Patent Applicants and Holders

In light of the KOM Software decision, software patent applicants and holders should consider the following guidance:

  • Focus on the inventive concept: Clearly articulate the inventive concept of the invention, emphasizing the specific technical implementation of the abstract idea.

  • Avoid claiming abstract ideas: Carefully review claims to ensure they are not directed to abstract ideas or well-understood, routine, or conventional activities.

  • Seek expert legal advice: Consult with experienced patent attorneys to assess the patentability of software inventions and craft claims that are likely to withstand scrutiny under the Alice test.


The KOM Software decision highlights the importance of understanding the evolving landscape of software patents and the challenges associated with obtaining and enforcing patent protection in this area. By carefully considering the Alice test and seeking expert legal advice, software developers and patent holders can increase their chances of success in the competitive realm of software patenting.

Our Law Firm Can Help

If you are involved in developing or seeking patent protection for software inventions, our law firm can provide comprehensive legal counsel and guidance including drafting software patents. Using an experienced patent attorney can draft patent applications, evaluate patent eligibility under the Alice test, and navigate the complexities of patent prosecution and enforcement.

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