CHRISTOPHER HALL

A consensus is emerging among colleagues in the patent bar that the U.S. Supreme Court’s opinion in Alice Corp. v. CLS Bank is not a disaster for software-based patents, as some originally feared.

Readers are likely aware the Supreme Court has issued a ruling in Alice. The United States Patent and Trademark Office (USPTO) also issued a memorandum in June on the subject.

Initially, it appeared to some that the Supreme Court ruling provided a blueprint for invalidating software-based patents or rejecting software-based patent applications. The Supreme Court reduced all of the claims in four issued patents to variations of, “An instruction to apply the abstract idea of intermediate settlement using some unspecified, generic computer.”

Apparently, all one has to do to invalidate a software-based patent or reject a software-based patent application is show that claims in such a patent or patent application are directed to an abstract idea, and show that any structural limitations, in the independent claims or the dependent claims, involving computers or other structural elements are devoid of “an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.’”

Since it is a straightforward manner to declare that just about any patent can be abstracted to an abstract idea at its foundation or core, it might seem at first glance the Supreme Court ruling puts software-based patenting as an overall category at risk.

Reading between the lines

Of course, the real answer as to whether or not this is so, and how narrow or broad the ruling is, will play out in the courts as the Supreme Court ruling is interpreted and applied. See Digitech Image Technologies LLC v. Overstock 2013-1600-1618 (Fed Cir. 2014).

Meanwhile, the June USPTO memorandum, while not having the force of law, nonetheless provides analysis of the Supreme Court ruling that we can use as guidelines for drafting claims in software-based patent applications. The memorandum reminds us, “Notably, Alice Corp. neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods.”

The memorandum is directed to examiners looking at patent applications, so we know a bit more about what the examiners in the USPTO are looking for, including whether the claim has limitations that qualify as “significantly more” than an abstract idea in and of itself. Examples of limitations that might qualify as “significantly more” include: “Improvements to another technology or technical field; Improvements to the functioning of the computer itself; Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.”

Examples of limitations that might not be enough to qualify include “Adding the words ‘apply it’ (or an equivalent) with an abstract idea, or mere instructions to implement an abstract idea on a computer; Requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry.”

It’s all about the Structure

The antidote to an assertion that claims are merely an abstract idea combined with the instruction to “apply it” is to add structure to the claims. Remember, abstract can be defined as non-concrete, mental, non-material, separated or apart from actual or real objects, among other definitions.

Reciting structural limitations anchors the claim to actual or real objects. The machine or transformation test, while not necessarily absolute, is still relevant. Reciting specific components in a computer, particularly components that have a novel function or structure, may qualify the claim as patent-eligible subject matter. This tactic moves the computer away from being a generic computer, and may qualify as an improvement to the so-called generic computer.

Tying the claim to a specific technology, like by reciting structural elements indicative of that technology, may qualify the claim as patent-eligible subject matter. Then, it can be argued that the claim shows improvements to the technology or the technical field. This could be especially helpful if the specific technology is not necessarily implied in the abstract idea in and of itself.

In a method claim, or an apparatus or system claim involving a function, which could be interpreted as a method, adding actions to the claim that amount to more than just “apply it” may qualify the claim. A result specific to a particular technology, or an unexpected result, while not mentioned in the memorandum, might also help qualify the claim as patent-eligible subject matter.Reciting, in the claims, a computer function that is not well understood, routine and conventional in the industry might also be useful. Software-based patenting is alive and well—we just need to adapt to changes in the legal arena. This is all part of the art of patenting.

In Practice articles inform readers on developments in substantive law. Contact James Cronin with submissions or questions at 
jcronin@alm.com.