Can Computer Software Can Be Patented?

08 Aug Can Computer Software Can Be Patented?

When it comes to patents, computer software is a very hit and miss field. In most cases, software cannot be patented. However, in my experience there are a few classes of software or computerization which meet the threshold of patentability:

Cryptography Equipment: While it seems that systems of cryptography, encryption, and user authentication should fare so well in patent examination, about 88% of patent applications for this type of software are ultimately granted.

Communications Optimization: This class of software doesn’t do quite as well as cryptography, but there are some approaches that work. For instance, it’s possible to patent a phone. Ergo, you can patent software that makes a phone signal clearer and easier to understand. By this logic, you can probably patent a virtual platform that modifies or transmits communications signals with a shorter delay, or some sort of other improvement.

Control Systems: If you designed a novel mechanical control for a piece of equipment, such as a bulldozer, it would be patentable. The same is true of an electronic control. Thus, patent examiners typically grant patents for computerized control systems, as long as the patent doesn’t solely focus on the carrier wave conveying information from a control to the equipment.

Computer Operation Optimization: If you create a piece of software or software revision that improves efficiency in a tangible manner, such as a BIOS that reduces electricity consumption, this is patentable.

If you have written a piece of software that you are interested in patenting, the Law Office of Michael O’Brien can help. To make an appointment, give us a call at 916-760-8265, or send us a message through our contact form.

However, you may still have questions as to why patenting computer software is so tricky…

The early years of the computer industry are notorious for the nearly countless overly broad patents for unimplemented concepts they spawned, which in turn became fodder for patent trolls. As a consequence, these days patent examiners and courts are much more on guard against would-be inventors attempting to patent abstract concepts.

This has been a bane to thousands of frustrated programmers and computer engineers who discover that their creations are not eligible for patent protection. This is because of the courts’ current interpretation of the single sentence that comprises Section 101 of the U.S. Code:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Section 101’s mention of “process” has spawned a vast number of patents that have ended up in court. For many years, patent courts had respected a concept known as the “machine-or-transformation test.” This approach indicated that abstract concepts were not patentable, but could be patented if implemented as a machine or in a process that transformed something from one state to another.

The machine-or-transformation test eventually opened the door to patenting processes in the form of computer programs.

However, in Bilski v. Kappos (2010), the courts threw cold water on relying solely on this test for determining patent eligibility. In that case, the court noted that its ruling could have an impact as to the “patentability of software” and other systemized abstract concepts.

Two years later, the Supreme Court held in Mayo v. Prometheus that methodologies and processes were not patentable, as the invention was merely an implementation of the abstract concept of hedging against risk. Granting such a patent would create an extremely broad monopoly, as patenting how something is done creates a much broader umbrella of protection than patenting a physical, concrete product.

Case in point: As a hypothetical, imagine a patent for the firefighting apparatus in a firetruck, versus a patent for “a process for controlling and extinguishing a fire.” In the former case, a group of people with buckets isn’t going to infringe on the patent. In the latter case, it’s quite possible that a bucket brigade might end up on the hook for patent infringement.

This is why patent courts frown upon patents for abstract ideas, even when they’re implemented in a computer program.

In 2014, the ruling in Mayo v. Prometheus was applied in Alice Corp. v. CLS Bank International. The latter case was filed by Alice Corporation, which owned four patents covering a computerized means of allowing two parties to exchange payment, with a third party settling the exchange and reducing the risk of non-compliance. When CLS Bank adopted the use of similar technology in 2012, Alice accused CLS of patent infringement. The two companies could not come to an agreement, and ultimately CLS filed suit against Alice in District Court, claiming that the patents in question were invalid.

Ultimately, the District Court found that a “computer system merely ‘configured’ to implement an abstract method is no more patentable than an abstract method that is simply ‘electronically’ implemented,” basing its ruling on Mayo.

The case subsequently made its way to the Supreme Court, where the Court unanimously ruled that the patents were invalid, as Alice’s patent merely computerized the concept of escrow.

Alice v. CLS Bank yielded what is now known as the two-step test for determining patent eligibility.

The Supreme Court recognized that their ruling could potentially destabilize the patent system. To stave off this possibility, in the opinion authored by Justice Clarence Thomas, the SCOTUS relied upon Mayo to describe a two-step process for determining whether an invention was patentable, or was merely an implementation of an abstract idea:

  1. It must be determined whether the patent claim relies upon an abstract idea, such as a method of computation, algorithm, or other generality. If this is not the case, the claim is potentially patentable (subject to the other requirements of the patent code). If this is the case, then the examiner must proceed to the second step.
  2. If the claim relies upon an abstract concept, then the patent must add something extra which significantly builds upon the abstraction. If the claim doesn’t add this necessary inventive element, then the patent is invalid.

Under this analysis, merely implementing a known concept in the form of a computer program fails to meet the threshold of patentability. This is why most forms of software are not patentable, while a select few classes, do pass the two-step test for patentability.