In Part 1 of this series, we examined the Supreme Court’s recent decision in Alice Corp. v. CLS Bank and how courts and the Patent Office have started to limit the scope of software patents as a result. In this second and final post, we’ll look at how an entrepreneur in the software space might be able to protect her intellectual property in light of this new guidance.

Software Implemented Inventions Can Still be Patented

Despite what some anti-patent advocates may have hoped, Alice did not invalidate all software patents, and software inventions can still be patented. In fact, the Alice decision, at most, delineated a boundary beyond which a computer-implemented idea becomes too abstract to be patented, without something more. Nor did the court hold that software inventions necessarily constitute abstract ideas and are therefore ineligible for patenting. In fact, nowhere in the court’s opinion is the word “software” even used. Without a doubt, many inventions that embody systems and methods implemented in software will continue to be awarded by the Patent Office and upheld by the court system.

The Scope of Patentable Software is More Limited

With the good news comes the bad for software inventors hoping for a new patent. The scope of patentable software inventions is now decidedly more limited than it was before Alice. Gone are the days where an inventor could program a generic implementation of Bingo and receive a patent for it. While the Supreme Court has not set any hard-and-fast rule on what, exactly, is considered “abstract,” we have an idea of the general shape of the boundaries: any program that simply takes a long-existing idea and generically implements it in code is too abstract to pass the Alice patent eligibility test. If you take your computer Bingo program, and mentally strip it down to its essential functionality, is it really just a Bingo game on a computer, or is it something more? Perhaps there is additional functionality that make it more than just Bingo. Maybe you’ve programmed some unique features within the code that take advantage of the hardware on a specific platform and make the program run more smoothly. If you have these sorts of features built-in to your program, even computer Bingo may be patentable under the second step of the Alice test.

 Carefully Consider Your Options Before Filing a Software Patent Application

Finally, as an entrepreneur, you should think very carefully about identifying the particular and novel aspects of your software before filing a patent application. Your attorney can help you narrow and identify these features, but in general, the following considerations are prudent:

  • Think about what, specifically, makes your software unique. Does it leverage a unique algorithm to create performance improvements? Is there a function that has never been accomplished before? Does the user interface create a new experience? If the novel aspects of your software currently exist, especially if they exist in a non-digital format (like the game of Bingo), is there something “extra” that makes the invention more than just converting it into a digital format? For instance, implementing Bingo on a generic computer is not patentable, but is there something really unique about the user interface that makes the Bingo card easier to interact with? Does the program take advantage of the memory architecture in a unique way to more efficiently store and retrieve data? Try to identify these features in as much particularity as
    possible, even before you sit down to develop the patent application language.
Under the new patent eligibility guidelines for software implemented inventions, patents must claim something more specific than functionality carried out by well-known programming techniques on general purpose computers.
Under the new patent eligibility guidelines for software implemented inventions, patents must claim something more specific than functionality carried out by well-known programming techniques on general purpose computers.
  • When you and your attorney do begin drafting the patent application, consider identifying the novel algorithmic aspects of the software and including flow charts or even representative source code or pseudo-code in the filing. This will help to demonstrate to the examiner that your code is more than just implementing an idea on a generic computer, which can be accomplished in a near-infinite number of ways. Including specifics about the algorithm (or several examples of a possible algorithm) in the application will give you the flexibility during the Patent Office review to narrow the scope of your claims and could potentially save the application from dismissal under an Alice rationale. Since the legal ramifications of Alice have yet to fully play out, this is an attractive way to preserve some (albeit narrow) patentable ground if the courts or the Patent Office further restrict software-enabled inventions.
  • Consider your overall business goals and, perhaps, reconsider the need to pursue a strategy of patenting. You may not need a patent to protect your competitive advantage. Implementing a strategy of keeping software a trade secret may be a viable alternative in some situations, and copyright generally protects unauthorized copying of software. The expense and hassle of obtaining a patent may not be worth the ultimate reward.