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Software Patents: History and Strategies (Pt. II – Strategies)

Last week we posted part one of this article, which focuses on the history of patent protection for software. Read part one here. Today we post part two, focused on current strategies for obtaining software patents.

Strategies to Increase Probability of Obtaining a Software Patent

What do the examples, cases, and categories identified by the USPTO mean for patent practitioners writing or prosecuting software patent applications, or for patent practitioners seeking favorable claim construction during software patent litigation?

First, any invention or patent claim that sounds like it might be interpreted as falling under one of the four categories of abstract ideas identified above should be approached by a patent practitioner with careful eye toward addition of inventive concepts to the claims.

A patent drafter writing a patent application on an invention that might fall under one of the abstract idea categories should inform his/her client about the possibility of subject matter rejection, and given authority to continue, should ensure that the patent application describes plenty of additional more hardware-centric inventive concepts that can be incorporated into the independent claims during prosecution if the need arises, particularly any inventive concepts that are arguably similar to a concept in a patentable claim in a Supreme Court or Federal Circuit case, or in a USPTO example.  For example, a patent drafter might identify particular hardware operations and particular data transmissions between hardware components or systems within the dependent claims, the drawings, or elsewhere within the specification, and would do well to give some thought to how such additional inventive concepts might be combined into the independent claims filed with the patent application.

A patent prosecutor seeking to overcome an “abstract idea” subject matter rejection should carefully read through the specification, including the dependent claims, drawings, detailed description, and even the abstract to identify additional inventive concepts that might qualify as “something more,” particularly those that clearly parallel a patentable claim in a Supreme Court or Federal Circuit case, or in a USPTO example.  The patent prosecutor should identify those examples or cases in the written response, or better yet, during an examiner interview, which provides the patent prosecutor with an opportunity to articulate and modify his/her argument as necessary in response to any concerns that the examiner raises, without incurring additional prosecution fees for the client.  Introduction of “Beauregard”-style claim language (describing software elements as stored on a “non-transitory computer-readable medium”) during prosecution is generally not as consistently useful as it was in the late 1990s, but can still be a helpful addition to some patent claims, particularly if the claims are otherwise thin on language describing hardware elements.

A patent litigator seeking to overcome an “abstract idea” subject matter invalidity argument should carefully read through the specification, including the dependent claims, drawings, detailed description, and even the abstract to identify interpretations of the claims that suggest “something more.”  The patent litigator should seek to identify interpretations of claims that can be viewed as similar to patentable claims Supreme Court or Federal Circuit cases.  If the patent litigator still has a chance to amend the claims via prosecution or reissue (particularly a broadening reissue if within the 2 year time limit), or indirectly via a continuation, he/she may wish to do so in order to strengthen the claims.

A review of the examples and cases suggests the following recurring themes regarding differences in the way that patentable claims and unpatentable claims are written:

DO

(higher probability of patentability)

DON’T

(lower probability of patentability)

·Recite machine hardware in claim limitations, particularly if specialized machine hardware

·Identify which components of a machine perform which operations

·Recite particular data transmissions between components or systems

·Identify a transformation from one state/object to another state/object

·Identify a tangible benefit, such as an increase to speed or efficiency of a machine or transformation

·Include meaningful limitations on use of mathematical formulas so as not to tie up the use of the formulas in other contexts

·Recite hardware or inventive steps in the preamble of a claim, which does not limit the claim

·Recite steps that could be performed by a human being

·Simply add “by a [generic] computer” or “over the Internet” to otherwise abstract ideas

·Recite collecting, comparing, or organizing data without other limitations

·Recite commerce, contracts, legal obligations, advertising, marketing

·Seek to tie up an entire abstract method with minor limitations so that others cannot practice it

Second, a patent prosecutor should pay careful attention to the evidence cited in an “abstract idea” subject matter rejection from the USPTO.

In particular, a patent prosecutor seeking to overcome an “abstract idea” subject matter rejection should check to ensure that every Section 101 subject matter eligibility claim rejection is supported by arguments that the claim is similar to a Supreme Court or Federal Circuit case, or to a USPTO example.  Some office action rejections may omit identifying support for a subject matter rejection entirely, or may include support based on a comparison to an invalid source (e.g., the author has received an Office Action with an “abstract idea” subject matter rejection that was invalidly supported by comparisons to various Patent Trial and Appeals Board decisions identified by an Examiner).

Third, a patent practitioner should convey a “story.”  A large part of the recent backlash against granting of software patents, both in the courts and in the public opinion, is related to a general societal backlash against non-practicing entities (also known as “NPEs” or “patent trolls”) that typically neither make nor use the inventions whose use and creation they monopolize via patent rights.

A patent drafter may, for example, wish to include within a patent application actual test data from tests of a prototype, model, or finished product to help show that the patent application has a real product with a real benefit behind it.

A patent prosecutor may, for example, wish to include an inventor during a conference-call examiner interview to help tell the story of the company or invention in addition to helping support any patentability arguments.  A patent prosecutor may wish to bring a photos, a film, a physical model, a prototype, or a finished product to an in-person examiner interview to show that the patent application is related to a real product with real benefits.

Conclusion

Successfully patenting processes and systems with software elements can often be difficult due to the continuing vagueness surrounding the “abstract idea” patentability exception and the newer “something more” inquiry, but can be very rewarding if the patent ultimately issues, paving the way for paid licensing agreements, cross-licensing agreements, and infringement protection.  By keeping a close eye on cases decided by the Supreme Court and Federal Circuit, and on examples and guidance provided by the USPTO, a patent practitioner can effectively boost his/her odds of obtaining and keeping an issued patent at the drafting, prosecution, and litigation stages.

©2020 All Rights Reserved. Lewis Roca Rothgerber LLPNational Law Review, Volume V, Number 323

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