It is Still Possible to Patent Software

This article discusses patenting strategies for prosecuting existing cases, as well as strategies for preparing cases yet to be filed, so they will withstand heightened scrutiny resulting from the new U.S. Patent & Trademark Office tests for determining patentable subject matter, following a line of cases that culminated in the Alice decision, in 2014.

The Supreme Court’s two-step abstract idea test determines if patent claims are “directed to” an abstract idea, and if so whether the claims recite “significantly more” than the abstract idea itself.

But the Court provided only the bare-bones test for what constitutes an “abstract idea” and when claims recite “significantly more.” It has fallen to lower courts to define the test, and to the USPTO to figure out implementation.

The author discusses several strategies for writing new applications and prosecuting stalled applications. For example, because there are widely different allowance rates between art units and examiners (even within the same group), it is beneficial to forum shop to the client’s advantage. The use of common specifications with different targeted claim sets may permit a case to be assigned to a particular art unit, which in turn may increase the likelihood of getting a patent.

Although software patents have been under fire for several years, valid approaches to preparing and prosecuting software patents are still available. By using lessons learned from recent cases and taking a more active role in prosecution, clients can obtain the protection that they need.