The process of obtaining a software patent requires knowing various legal requirements and statutes. This post aims to explain the process for obtaining a software patent and the essential requirements a software patent application must have to avoid being excluded under section 101 of the patent act.

Understanding Software Patents

A software patent typically covers a specific set of algorithms or processes that are executed on a computer. These patents are required to be novel and non-obvious, and they cannot be directed towards abstract subject matter. Obtaining a software patent can be very beneficial for startups and companies, especially when it comes time to secure funding or exclude competitors from using the patented technology.

Checklist for Filing a Software Patent Application

1. Determine Patent Eligibility: Not all software patent applications are considered patent eligible. The USPTO often raises a section 101 rejection against patents which contain claims that they consider to be abstract. Abstractness is a evolving concept in the law and it is currently determined based on a two part framework, which is referred to as the Mayo test or the Alice/Mayo test. The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.

2. Conduct a Thorough Search: Perform a detailed patent search to determine if similar inventions already exist. This step is crucial to ensure the novelty of the software. A patent application must not only be patent eligible but must also be novel, non-obvious, and useful.

3. Draft a Detailed Patent Application: The application must thoroughly describe the software invention, its components, and its operation. This includes writing claims that precisely delineate the scope of the invention.

4. File with the USPTO: Submit the patent application to the United States Patent and Trademark Office (USPTO). The application undergoes a rigorous examination process wherein the patent examiner assesses its compliance with patent laws and regulations.

The Bilski Case and Its Implications

The 2010 Supreme Court case, Bilski v. Kappos, significantly impacted the landscape of software patents. The case centered around Bernard Bilski and Rand Warsaw, who had filed for a patent on a method of hedging risks in commodities trading. The application was rejected on the grounds that it was an abstract idea, not tied to a specific machine or apparatus, and thus not patent-eligible under Section 101.

The Supreme Court’s decision in Bilski established the “machine-or-transformation test” as not being the only indicator of patent eligibility. According to this test, an invention is patentable if it is tied to a particular machine or apparatus or if it transforms a particular article into a different state or thing.

Avoiding Section 101 Exclusions

Section 101 of the United States Patent Act outlines the types of inventions that are eligible for patents. To avoid falling under the exclusionary rule of Section 101, a software patent must demonstrate more than an abstract idea. The invention must include additional features that ensure it is not merely a theoretical concept.

Requirements for Patent Eligibility

• Novelty: The software must introduce a new and previously unknown method, system, or process.
• Non-Obviousness: The invention should not be something that a person with ordinary skill in the field could easily deduce.
• Specificity: The software should be described in precise terms, detailing how it operates and solves a particular problem.
• Utility: The software must offer a practical application or beneficial use.

Conclusion

Patenting a software invention is a complicated process. The Bilski case underscores the importance of demonstrating that a software invention offers more than an abstract idea. By ensuring the invention meets the requirements of novelty, non-obviousness, specificity, and utility, inventors can navigate the complexities of Section 101 and secure valuable intellectual property rights.