Best Practices for Drafting Software Patent Applications post-Alice

By Gene Quinn
December 6, 2015

best-practicesTypically, most computer innovations relate at least in some way to software, which is at the very core of the challenge facing patent attorneys and innovators today. It is the software that directs the computer, or more generally a machine, to do unique and often wonderful things. Indeed, it is the software that provides the innovative spark, not the machine on which the software operates. Still, for reasons that are hard to understand and even harder to explain the courts, specifically the United States Supreme Court and the United States Court of Appeals for the Federal Circuit, continue to exalt the hardware at the expense of the true innovation found in the software.

If you remove all of the software from your smart phone suddenly the phone is not terribly smart and would rather approximate a paperweight more than anything else. The same can be said about your computer, of course, but also about your automobile. If you were to instruct your mechanic to remove all the software from your vehicle you would have one very large, expensive piece of junk that wouldn’t start and wouldn’t be at all useful to get from point A to point B. Yet, despite this reality, the courts continue to exhibit a thoroughly misguided understanding of the core of the innovation at issue.

The Patent Office continues to issue software patents, at least in some Art Units, but the sad reality is applicants are virtually assured uneven and unequal treatment of their patent applications depending upon the patent examiner assigned to the case. Still, at least in theory, software remains patent eligible. At least some patents are issued covering software related inventions each week, and no one seriously believes software will become patent ineligible. Eventually either the courts or Congress will come to their senses and realize that the digital economy requires digital innovation, and software is at the heart of those technological advances in the digital age.

In the meantime, patent professionals and innovators need to figure out how to responsibly move forward. If filing a patent application is desirable a great deal of information must be included in that patent application in order to have any chance to overcome the numerous hurdles that currently stand between the applicant and a viable issued patent.

The chief hurdle is the Supreme Court’s decision in Alice v. CLS Bank, which has infused a great deal of uncertainty into the law of patent eligibility. But even if the software related innovation is patent eligible there are other meaningful hurdles, particularly obviousness (i.e., 35 U.S.C. 103) and adequate written description (i.e., 35 U.S.C. 112).

The good news is that any patent application filed now covering a software related innovation will undoubtedly sit awaiting a First Office Action on the Merits for at least two years, more likely three years. Even then the prosecution will drag on for another 18 to 24 months thereafter. That means that the law that will be used to evaluate the software patent applications filed today has not yet been written by the courts. That is both good news and bad news. It means the draconian interpretations of the Supreme Court’s Alice decision should have largely subsided by then, perhaps we will have Congressional action once and for all settling the matter, but it also means that the standard used by examiners is one that cannot be known presently. For that reason it is absolutely critical that software related innovations describe the technology to the greatest extent possible, focusing on as much that is tangible as possible. In short, the software patent application you file today is not your father’s software patent application.

In order to maximize the likelihood of obtaining a favorable result at the Patent Office, here are a few things that applicants must absolutely keep in mind:

  1. Real flow charts are essential! We have all seen the drawings in software patents where there are four boxes connected together to form what is really a line from top to bottom of the page. Those were likely never useful, not at least if it was the only illustration, but today illustrations like that are really a waste. If your computer implemented method is A to B to C to D then don’t waste your time. Save your money, because you aren’t going to get a patent anyway. What you need are extremely detailed flow charts that at a minimum teach the core algorithms.
  2. Describe the all the tangible components to the greatest extent possible. As Figure 14 of U.S. Patent No. 8,515,829 demonstrates, in order for this computer implemented process (invented by Google) to be carried out there are a great number of tangible components that are needed.
  3. Describe hardware alternatives to accomplishing the computer implemented processes. After all, whether you implement a solution in hardware or in software is largely a design choice. Those familiar with the technical reality of software also know that any computer implemented process that can be accomplished using software can also be accomplished using logic gates. Indeed, logic gates are foundation for all digital electronic circuits and microprocessor based systems. Thus, software can be explained on its core level as a process for manipulating logic gates.
  4. Don’t be afraid to make the technical disclosure long, dense and difficult to read, at least for those without technical training. In my opinion one of the biggest reasons the Supreme Court has embarked upon this path to render much innovation patent ineligible is because they actually understand the inventions in question. In Bilski, for example it was little more than thinking, observing and acting. In Alice they convinced themselves it was just little more than ledger accounting. Dumbing down the technical disclosure so even a Justice of the Supreme Court can understand is a mistake, at least in my humble opinion.

Of course, there is more to discuss than any single article could ever cover. Although some of the following article pre-date the Supreme Court’s decision in Alice v. CLS Bank, best practices in the industry have for some time been to describe your computer implemented invention with particular attention to the hardware components and system environment, or in other words focusing on the tangible. Therefore, for more on this topic I recommend reading the following:

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 12 Comments comments.

  1. Curious December 6, 2015 6:45 pm

    The chief hurdle is the Supreme Court’s decision in Alice v. CLS Bank, which has infused a great deal of uncertainty into the law of patent eligibility.
    The chief hurdle is the Federal Circuit that ignores the statement in Alice that “we tread carefully in construing this exclusionary principle lest it swallow all of patent law.” Instead, the Federal Circuit has been treading quite recklessly. The Supreme Court didn’t do us any favors by not defining what they mean to be an “abstract idea,” but a plain reading of Alice is that they didn’t intend to expand the doctrine far from Bilski. As such, what was patentable after Bilski and before Alice should be patentable today.

    Frankly, it doesn’t matter how much or how little you put in your specification. If a judge (or Examiner) does like your claims, there isn’t much you can do. Based upon Federal Circuit precedent it is all to easy to classify just about anything an “abstract idea,” and ignore the rest of the limitations.

    Once the judge decides that you’ve got a pig, putting lipstick on it isn’t going to help.

  2. Alex in Chicago December 7, 2015 2:27 pm

    I would add that it will be wise to disclose the software ‘architecture’ that underlies your algorithm and flow charts. And moreover, direct at least one of your independent claims to those specific computer-oriented functions, objects, etc instead of the functions that they perform in the real world. In this way, your claim would more closely mirror a mechanical device that performs a function, and less like many of the patents we see struck down using 101 which typically recite things like “receiving” “processing” “transforming” “signaling” etc in combination with the novel step in the method, such as “optimizing wind turbines to have greater than 30% efficiency”.

    The downside, is that if you write a claim like that, it is easier to design around, the upside is, that is what the Supreme Court is demanding: That your claims cannot encompass all wind turbines that operate over 30% efficiency.

  3. Anon December 7, 2015 4:12 pm

    Alex in Chicago,

    I wonder if you have ever heard of the gentlemen who posts under the pseudonym PoIR? Or if you have ever heard of the (philosophical? – if you want to approach the Tegmark level) equivalencies that render your advise as to “architecture” not only moot, but perhaps dangerously self-limiting?

    Lastly, I wonder if you have heard of the patent/technical arts term of “ladders of abstraction”….? Your advise seems to exhibit an unhealthy degree of lack of understanding along this critical line of thought.

  4. Alex in Chicago December 7, 2015 7:54 pm

    It is certainly self limiting. If you read the tea leaves, being self limiting, in at least one of your independent claims, is the only way to avoid committing malpractice for your clients.

    Maybe I am wrong, and I certainly appreciate that such a patent is likely narrow and difficult to enforce (along with the risk that courts may not even agree that this approach is valid). However, I simply point it out because its something worth trying over simply banging your head against Alice over and over and hoping for incompetent examiners/lazy judges as Gene seems to suggest.

    Also no, I don’t know poir.

  5. Curious December 7, 2015 8:04 pm

    such as “optimizing wind turbines to have greater than 30% efficiency”
    Tilting at windmills I see (one of NH’s favorite windmills to boot).

    112, 1st paragraph is a better approach to dealing with those types of claims.

  6. The_Truth December 8, 2015 10:55 pm

    “The good news is that any patent application filed now covering a software related innovation will undoubtedly sit awaiting a First Office Action on the Merits for at least two years, more likely three years”

    Actually, the backlog in the PTO’s TC 2100 and 3600 is getting smaller and smaller, so the average backlog for a FOAM is about 1-1.5 year these days.

  7. Gene Quinn December 9, 2015 1:19 am

    Alex in Chicago-

    First rule of commenting on IPWatchdog.com is to keep your comments real and honest. Second rule is there is no right to comment on IPWatchdog.com. If you cannot comment in a way that move the conversation forward in a substantive manner your comments will be deleted and you will be banned. I hope you understand.

    Now, substantively, I never suggested in this article or anywhere ever that applicants should hope for incompetent examiners or lazy judges. For you to say that is utterly ridiculous and frankly asinine. Perhaps it makes you feel better to make things up about me and misinterpret what I write, but more is expected in the comments on IPWatchdog.com. If you cannot rise to that level please go elsewhere. There are plenty of places where lies and asinine misrepresentations are accepted and even appreciated.

    -Gene

  8. patent leather December 9, 2015 9:02 am

    “In my opinion one of the biggest reasons the Supreme Court has embarked upon this path to render much innovation patent ineligible is because they actually understand the inventions in question.”

    I actually think that the Supreme Court did not understand the Alice invention. They thought they did, but it was more complicated than they really thought it was and Carter Philips made no attempt to explain to them what the invention really is and the problem it solved. Alice was a terrible test case and unfortunately, now we are stuck with it.

  9. step back December 9, 2015 1:06 pm

    Patent Leather @8,

    If you give a biotech patent case to one who practices electrical or mechanical prosecution it is highly unlikely that they, as specialist in the patent field will understand it (and vice versa).

    The Supremes are not specialists in patent law. They render opinions in all manner of endeavor from Admiralty to Veteran Affiars. Absolutely they do not understand what they are dealing with, They are under the delusion that “common sense” will save the day. Is it more like plucking a leaf from a tree or lathing a baseball bat from the tree trunk? (The deciding point in Myriad)

  10. Gene Quinn December 9, 2015 3:17 pm

    patent leather-

    I agree. The Supreme Court understood on a conceptual level what the invention was and did, but they never appreciated the complexity of the invention. Carter Phillips did the patent owner no favors agreeing twice that a college student could have written the code over a weekend, which is nonsense.

    If there really is an invention present you can describe the software with thick, very dense technical jargon to ensure that a generalist has absolutely no possible hope of understanding the complexity of the invention. I think that is what we need to do in software patent applications. I’m not saying hide the invention unnecessarily, what I’m saying is just don’t dumb down the invention so Joe average thinks they get it. You want Joe average to realize that they don’t get it. After all, the entirety of patent law relating to disclosure tells us the goal is not to educate Joe average, but rather to inform and disclose so that the relevant technically educated individual comprehends the invention.

    While Alice may not have been a great test case, Bilski was even worse. Mayo was probably even a worse test case than Alice and Bilski combined. The Supreme Court understands so little about technology and so little about patent law they are forever taking terrible cases and making terrible law. Even if what they write is not literally awful they lack the ability to comprehend how other decision makers in the system, from examiners, to PTAB judges to Article III judges will interpret and apply their broad sweeping statements.

  11. nat scientist December 9, 2015 5:17 pm

    Mark Twain had a couple of three sentences for SCOTUS:

    “There are basically two types of people. People who accomplish things, and people who claim to have accomplished things. The first group is less crowded.”

    “It ain’t what you don’t know that gets you into trouble. It’s what you know for sure that just ain’t so.”

    “Thousands of geniuses live and die undiscovered – either by themselves or by others.”

    Mark Twain

    Happy Holidays and “Happy Birthday to you” was cut off at the pass in record time. Warner/Chappel Music pirates had a moment of clarity in a flash of the justice of the peace.

  12. step back December 9, 2015 5:26 pm

    Gene @10

    Not only are the Mount Olympus 9 dwelling in Medieval times with their notions of “natural laws”, “abstract ideas” and just “apply it”, so too are many of the Prometheus “bound” judges on the Fed. Cir. No one seems to have the cojones to stand up to the Supremes and say you guys are wholly incompetent in this field as proven time and again and you should stay out. of it.

    The whole circus is a ludicrous one.

    http://patentu.blogspot.com/2015/12/judge-l-lets-loose-his-laws-re-laws-of.html