Software Patents

Can software be patented?

Up until 2012 the answer would have been, probably.

The U.S. Patent Law governing what subject matter is eligible for patent protection is codified in 35 U.S.C. §101, where:

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”1

History

Historically, patent laws defining what could be patented were given wide scope. When patent laws were revised in the Patent Act of 1952, it was noted that:

“The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to ‘include anything under the sun that is made by man.’”2

Eligible patent subject matter was given wide scope, but not unfettered scope. In Diamond v. Chakrabarty, the U.S. Supreme Court went further to say:

“This is not to suggest that 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable.” 3

So not everything was patentable. There were judicially imposed limitations to the broad scope of patentable subject matter. So the question of whether software was patentable was, probably. All this was well-settled law and provided certainty to this question.

Under 35 U.S.C. §101, an invention must fall into one of the defined statutory classes. Either a process, machine, manufacture, or composition of matter.

Of the four statutory classes, software would most likely fall into the “process” class. According to 35 U.S.C. §100(b), the term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.4 Where “process” has been interpreted to be “an act, or series of acts or steps.”5 And, software patents were categorized similarly to business method patents.

Restrictions

But the Supreme Court began to tighten restrictions on the eligibility of software and business method patents. In 2010, in Bilski v. Kappos, the “machine-or-transformation” test6 was required to be satisfied to make software patentable.

In Bilski, the court held that:
“[a] claimed process is surely patent-eligible under §101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.”7

The court concluded this “machine-or-transformation test” is “the sole test governing §101 analyses,”8 and thus the “test for determining patent eligibility of a process under §101,”9

This “machine-or-transformation” test makes pure software not patentable, because software must be tied to a “particular machine or apparatus” and transforms an “article in a different state or thing.” A process performed on a general-purpose computer does not qualify as a machine or apparatus, and pure software does not transform physical articles into a different state or thing.

After 2012

But the landscape of patent law has now changed. Starting in 2012, the Supreme Court issued a series of decisions that upset the certainty and predictability of whether software can be patented.

Mayo and Myriad cases

In the Mayo v. Prometheus10 and Assoc. for Molecular Pathology v. Myriad Genetics11 decisions, the Supreme Court created a test for the patentability of natural laws, natural phenomenon, or natural products.

The process for determining subject matter eligibility relating to laws of nature, natural phenomena, or natural products is:12

  1. Is the claimed invention directed to one of the four statutory patent-eligible subject matter categories: process, machine, manufacture, or composition of matter?
    • If no, the claim is not eligible for patent protection.
    • If yes, proceed to Question 2.
  2. Does the claim recite or involve one or more judicial exceptions?
    • If no, the claim is patent-eligible, and the analysis is complete.
    • If yes, or if it is unclear whether the claim recites or involves a judicial exception,proceed to Question 3.
      • Judicial exceptions include abstract ideas, laws of nature/natural principles, natural phenomena, and natural products.
  3. Does the claim as a whole recite something significantly different than the judicial exception(s)?
    • If the answer is no (i.e. the claim as a whole is not significantly different than thejudicial exception(s)), the claim is not patent-eligible and should be rejected.
    • If the answer is yes (i.e., the claim as a whole is significantly different than thejudicial exception(s)), the claim is patent-eligible, and the analysis is complete.

“A significant difference” can be shown in multiple ways, such as:13

  1. the claim includes elements or steps in addition to the judicial exception that practically apply the judicial exception in a significant way, e.g., by adding significantly more to the judicial exception; and/or
  2. the claim includes features or steps that demonstrate that the claimed subject matter is markedly different from what exists in nature.

In light of the above test in the USPTO Guidance, a claim must recite something more than mere conventional steps. Claims written more narrowly in scope are more likely to be patentable.

Examine the claims to see if they are directed to a natural law, natural phenomenon, or a natural product by looking for different characteristics. If there are no different characteristics, then the claim is a product of nature or an abstract idea and not patentable.

Alice Corp. v. CLS Bank International

In 2014, the patentability of subject matter changed once again.

In Alice v. CLS Bank14, patent claims were directed to a computer-implemented financial settlement system and these claims were found to be valid because they did not fall into the patent-ineligible category of “abstract ideas.” But the Court held the claims patent ineligible on the basis that generic computer implementation does not transform a patent-ineligible abstract idea into a patent-eligible invention.15

The Supreme Court thus narrowed the scope of patent eligible subject matter. The decision created uncertainty and ambiguity in the scope of technologies involving “abstract ideas” making it difficult to predict how the new standard should be applied.16

Because abstract ideas are not patentable, abstract ideas implemented by a general purpose computer with conventional components and or operation of a general-purpose computer are not patentable. The application of a computer in a claimed method must be transformative. The mere application of a computer in a claim is not enough, it must do something more.

“merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”17

The Supreme Court set forth the Alice Test.

“First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. Id., at ___ (slip op., at 8). If so, we then ask, “[w]hat else is there in the claims before us?” Id., at ___ (slip op., at 9). To answer that question, we consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application.”18

In summary, we ask,

  1. Whether the patent claims at issue are directed to a patent-ineligible concept, and
  2. If yes, we look at whether the claim elements considered in both individually and in combination, “transform the nature of the claim” into a patent-eligible concept.

This test determines if the claim recites an abstract idea. If it is an abstract idea, to be patentable, the claim elements must perform a transformation and must do something more.

An abstract idea is not patentable. If the claim recites an abstract idea, then it must include additional features. For example, a method that is processed within a computer, such as a mathematical computation, without claiming results outside the computer, will likely be found to be an abstract idea.

If a claim is found to be an abstract idea, the Alice test asks whether there are additional features recited in the claim that provides something more that transforms the nature of the claim into something outside the computer program or algorithm programmed in the computer.

Methods that use a general purpose computer to perform an action that a person can do by hand or conventionally performed business financial transactions are not patentable.

The more detailed the claim, with more specific elements, the more likely that the claim will be eligible because it claims something more than an abstract idea.19

Without additional claim limitations to additional physical devices or that provide something more than just an algorithm causing performance of something non-conventional or unobvious, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not eligible.20

There is no difference between steps performed on a generic computer and steps performed over the Internet.21

Drafting Software Claims

Rules of thumb for drafting software claims, following Alice.22

  • If a claim recites elements outside the computer causing the operation or occurrence of something outside of the computer, then it will likely be found to be more than an abstract idea. For example, a vehicle or machine that performs a function that relies on the computer to cause that function or the occurrence of something outside of the computer itself would likely not be an abstract idea, such as a self-driving car.
  • If the software causes some transformative action outside of the computer or outside or beyond the natural occurrence or a law of nature, recite that in the claim and recite its features that are not found in nature.
  • Describe the transformative action in the specification and its benefits. Claim something outside of the computer that causes machine operation.
  • Describe the problems to be solved in the claim and describe the steps needed to solve it. If the claim improves a technology be sure to claim it or limit the claim to that.
  • Claim more than linking the abstract idea to a particular technology or result. Do not claim by applying the abstract idea or implementing the idea merely on a computer.
  • Recite machines or hardware used in the method and specify the function that each performs.
  • Identify and explain the transformation from one state to another and claim a resultant benefit that otherwise would not be obtainable.
  • Show that the steps taken or results obtained could not have been done or achieved without the program that is claimed.
  • The claim must be tied to a specific structure or machine.
  • A claim reciting specific structures, machines that perform that method, or acted upon with the method, have a better chance of being found eligible.

Conclusion

So can software be patented? Well, as usual, it depends. Following Alice, pure computer programs are likely not patentable. But if the claim does something more, causing an action to occur outside the computer, (e.g. a self-driving car), then the claim may likely be found to be more than an abstract idea, and thus may be patentable.

  1. 35 U.S.C. §101 (July 19, 1952, ch. 950, 66 Stat. 797.) [↩]
  2. Diamond v. Chakrabarty, 447 U.S. 303 (1980). [↩]
  3. Id. [↩]
  4. 35 U.S.C. §100(b). [↩]
  5. USPTO Guidance: Statutory Requirements and Four Categories of Invention, August 2015. [↩]
  6. Bilksi v.Kappos, 561 U.S. 593 (2010). [↩]
  7. d., at 954. [↩]
  8. Id., at 955. [↩]
  9. Id., at 956. [↩]
  10. Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012). [↩]
  11. Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013). [↩]
  12. USPTO Guidance, 2014 Procedure For Subject Matter Eligibility Analysis Of Claims Reciting Or Involving Laws Of Nature, Natural Principles, Natural Phenomena, And/Or Natural Products. [↩]
  13. Id., 2-3. [↩]
  14. Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). [↩]
  15. USPTO publication, Adjusting to Alice, USPTO patent examination outcomes after Alice Corp. v.CLS Bank International, (2020). [↩]
  16. Id. at 2. [↩]
  17. Alice Corp. v. CLS Bank, supra note 14. [↩]
  18. Id. [↩]
  19. Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA, LLC, 635 F. App’x 914 (Fed. Cir. 2015). [↩]
  20. Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 111 U.S.P.Q.2d (BNA) 1717 (Fed. Ct. 2014). [↩]
  21. Bascom Research, LLC v. LinkedIn, Inc. 77 F. Supp. 3d 940 (N.D. Cal. 2015). [↩]
  22. Faber on Mechanics of Patent Claim Drafting, 7th Ed, R.C. Faber, PLI (2016), section 1:5.4.. [↩]