Best Practices for Software Applications post-Alice

Strategies which give software patent applicants time and flexibility to counteract the effects of the US Supreme Court’s Alice decision become more valuable with each passing day. As I pointed out in a previous blog post, this is because:

• The United States Patent and Trademark Office (USPTO) continues to issue clarifying guidelines for applicants to deal with the impact of the Alice decision; and
• The courts, namely the United States Court of Appeals for the Federal Circuit (USCAFC), continue to bring down judgments which further clarify Alice. 

The recent McRO vs Bandai and BASCOM vs AT&T USCAFC decisions and accompanying USPTO November 2016 memorandum; and USPTO December 2016 Subject Matter Eligibility Examples demonstrate this continuing clarification. In a previous blog post, I also discussed lessons which could be drawn from the USCAFC Enfish vs Microsoft decision. Putting together those lessons and the recent clarifications, a set of best practices for software patent applications is emerging, as I will explain below.

In its November 2016 memorandum, the USPTO stated the following notable points with regard to McRO vs Bandai:

• Examiners should consider the claim as a whole and not try to overgeneralize or simplify it into gist or core principles
• An improvement in computer-related technology may also be claimed as a set of “rules” that allow computer performance of a function not previously performable by a computer. Indications of improvement include
• Teaching in the specification about how the claimed invention improves a computer or other technology; and
• Claiming a particular solution to a problem or a particular way to achieve a desired outcome defined by the claimed invention as opposed to claiming the idea of a solution or an outcome.

With regard to BASCOM vs AT&T, the USPTO stated the following in both its November 2016 memorandum and December 2016 Subject Matter Eligibility Examples:

• Examiners should consider additional elements both in combination and individually when determining whether a claim as a whole is patent eligible. This is because the claim as a whole may pertain to a non-conventional and non-generic arrangement of known conventional elements.
• The limitations in the claims confine the invention to a specific practical application of the abstract idea.

In the December 2016 Subject Matter Eligibility Examples, the USPTO provided two further examples relating to automated teller machine (ATM) technology, and technology to track inventory. In both cases, the USPTO gave examples of claims directed to each of the technologies which were patent eligible, because these claims relate to specific implementations; and the combination of elements in the claims relate to the performance of functions in a non-conventional and non-generic way.

Based on the continuing clarifications and Enfish vs Microsoft, a set of best practices for software applications post-Alice can be drawn up:

1.  Describe the underlying hardware where the software resides using non-generic terms. Software does not exist in a vacuum. Also using non-generic terms makes it more difficult for the examiner to state that the additional elements either individually or in combination are generic components. Furthermore, the examiner is less likely to find that the claims are directed to an abstract idea, if the claims are tied to the underlying hardware.
2. State clearly within the specification how the invention at hand improves the operation of the underlying hardware over the prior art. For example, in McRO vs Bandai, the USCAFC relied on the specification’s explanation of how the claimed rules enabled automation of specific tasks that previously could not be automated.
3. Direct the claim towards a particular solution to a problem or a particular way to achieve a desired outcome defined by the claimed invention.
4. Use claim language that allows the applicant to make prosecution arguments to tie in with the language of the USPTO guidelines relating to the above decisions.
5. Tie the claim language to the hardware using more “technical” language rather than generic terms.

Additionally, it may also be worthwhile to propose a narrower independent claim where the words “enhance” or “improve” are used. While these may seem unnecessarily narrowing to some, sometimes trading off breadth for an issued patent is useful. As I pointed out in my last blog post “Take It or Keep Going”, advantages include:

• Easier to convince investors for fundraising,
• Easier to market products connected to the application, and
• Less resources needed to continue prosecution of the application.