Software Patents
As businesses continue to drive innovation through the use of computer applications, programs and software, understand the intricacies of protecting your investment has become more difficult. This post provides Five Software Patent Application Tips to help businesses, inventors and entrepreneurs consider patent strategies when considering a Software Patent which may include a blockchain patent, ai patent or system patent.Software patents have become increasingly important in 2024 with many businesses using software to increase their technological focus and business landscape.
Generally, Software Patents have been increasing in difficulty to obtain as Patent Law continues to evolve in an effort to keep up with the growing technogical landscapte. In fact, recently, the US Patent Office issued new Patent Office Procedures and Guidelines to address some of these issues along with the evolution of federal court’s hearing disputes about software patents. A 2023 court case, WSOU Investments LLC v. Google LLC offers some valuable insights for patent practitioners attorneys about careful claim drafting and provides guidance on how to navigate the evolving landscape of patent eligibility for software-related inventions.
WSOU v Google
WSOU (a software company which makes a clock and camera software) sued Google for infringing 15 patents. After trial, the federal court found many of the claims at issue invalid becasue they were indefinite based on a means-plus-function analysis. In WSOU, the patent used the term processor when referring generically to anything that manipulates data. Often in software patents, a patent draftsman will use a functional term like processor to refer to something functionally. When a patent draftsman uses a term whcih is defined only by the function it performs, instead of reciting specific structure, where the term can be interchanged for the term means, then the term is considered a function term which must be analysed as a means-plus-function analysis. In WSOU, the patent used the term “processor” to refer to the function of processing software and a hardware device which processes software and thus the term should be analyzed accordingly.
Means Plus Function (M+F)
The first part of the test is to determine if a term is used as a functional term. If a term is used as a functional term, then the court progresses to the second step, determining what structure, if any, is disclosed in the specification, corresponds to the claimed function. If the term does not have sufficient structure disclosed in the specfication, the claim is invalid. If any claimed function does not disclose sufficient structure, then all claimed functions are invalid for being indefinite.
Under a M+F analysis, it is not enough to describe something at a high level without details on how to peform the operation to achieve those results. The question is whether one of skill in the art would understand the specficiation itself to disclosure a structure, not whether the person would be capable of implying a structure. The third part of the test is whether the structure disclosed is clearly linked to the claimed function. This means that the knowledge of “one skilled in the art” should be used as a lens for interpreting the term, not as a gap filler. Again, under a M+F analysis, “one skilled in the art” must clearly understand the structure not practice the invention.
As a result of the lack of disclosed structure, the WSOU court held that because the term processor did not recite sufficintly definite structure in the specification and was invalid.
Software Applications Tips from WSOU
The WSOU ruling emphasizes several critical points for software patent drafting:
Draft with Focus on Technical Solutions Identify and articulate specific technical solutions to technical problems. Claims that merely recite generic computer components performing routine functions are not enough. Instead, patent applications should explain how the claimed invention improves computer functionality or solves a technology-centric problem.
Draft Detailed Specification A well-crafted specification is crucial. Specifications which include a thorough technical description of the invention, including specific examples of implementation are better. Patents should capture the technical nuances of the inventors invention.
Avoid Abstract Ideas While software inventions may involve abstract concepts, claims should be drafted to emphasize tangible results with specific applications and technical improvements. Claims directed to abstract ideas are different from those focused on specific implementations that provide technological advancements.
Five Tips for Drafting Software Patent Applications
In light of this decision, patent practitioners should consider the following strategies:
1. Emphasize Technical Improvements Clearly articulate how the invention makes something happen using technology. This may include enhancing processing speed, reducing memory usage, or improving user interface functionality. Do not focus on evaluating or organizing something or even post-solution activities like displaying, reporting or printing.
2. Provide Detailed Technical Descriptions Include flowcharts, algorithms, and specific examples of how the invention operates. This helps demonstrate that the claims are grounded in concrete implementations rather than abstract concepts. Provide structure
3. Draft Claims at Multiple Levels of Abstraction Include claims with varying scope, from broad conceptual claims to narrower, implementation-specific claims. Consider using a means for language to avoid functional claim traps. This approach provides fallback positions and increases the chances of obtaining meaningful patent protection.
4. Highlight Novel Hardware Configurations Where applicable, emphasize any unique hardware arrangements or configurations that support the software innovation. This can help distinguish the invention from purely abstract ideas.
5. Address Potential Section 101 Challenges Anticipate and preemptively address potential patent eligibility challenges in the specification. Explain why the claimed invention is not an abstract idea and how it provides a specific improvement to computer technology and identify the specific technical benefit of the claimed invention e.g. faster search times within a database, smaller memory requirements.
By following these guidelines and staying attuned to evolving case law, our patent attorneys can help you protect and defend your software patents. An experienced patent attorney can help provide technically-focused patent applications for inventions within the software area.