Software patent applications need specifics, should tell a story

SILICON VALLEY, Calif. – What do examples, cases and categories identified by the U.S. Patent and Trademark Office (USPTO) mean for individuals or businesses seeking software patent applications, or those seeking favorable claims during software patent litigation?

There are strategies to follow for successfully obtaining and defending a software patent, says Jacek Wnuk, an attorney in the Intellectual Property practice group at Lewis Roca Rothgerber LLP.

“Keeping a close eye on cases decided by the Supreme Court and Federal Circuit, and on examples and guidance provided by the USPTO, can effectively boost your odds of obtaining and keeping an issued patent at the drafting, prosecution, and litigation stages,” says Wnuk.

Writing on the firm’s Most Valuable Property Blog, he delves into the history of software patents, and some of the DOs and DON’Ts for patentability:

  • First, any invention or patent claim that sounds like it might be interpreted as falling under one of the four categories of abstract ideas should be approached by a patent practitioner with careful eye toward addition of inventive concepts to the claims, particularly those tied to hardware elements.

  • Second, a patent prosecutor should pay careful attention to the evidence cited in an “abstract idea” subject matter rejection from the USPTO, for example taking care to point out any cited evidence that is not based on Supreme Court or Federal Circuit decisions.

  • Third, a patent practitioner should convey a “story.” A large part of the recent public backlash against software patents is actually more related to a societal backlash against non-practicing entities (also known as “patent trolls”) that neither make nor use the inventions whose use and creation they monopolize via patent rights. Acquainting a USPTO examiner with an inventor, and a story behind an invention, can help dispel any lingering fears about how the patent will be used and help the USPTO see things from the inventor’s perspective.

Writing a patent application on an invention that might fall under one of the abstract idea categories carries the distinct possibility of subject matter rejection, says Wnuk.

“A patent drafter may, for example, wish to include within a patent application actual test data from tests of a prototype, model, or finished product to help show that the patent application has a real product with a real benefit behind it,” he explains.

Successfully patenting processes and systems with software elements can often be difficult due to the continuing vagueness surrounding the “abstract idea” patentability exception and the newer “something more” inquiry, but can be very rewarding if the patent ultimately issues, paving the way for paid licensing agreements, cross-licensing agreements and infringement protection, adds Wnuk.