Today, software can be found in the most mundane, as well as in the most complex products. Software makes it possible to have a degree of flexibility in the design of a product, including providing the ability to upgrade a product while it remains in the field. The use of software makes large volume products less expensive, since the major cost is front loaded in the development of the software, as opposed to continuously recurring in products that rely more on hardware. Understanding the protections afforded to software through the patent and trade secret laws of the US, as well as in foreign countries, can be challenging in light of the changes that occur from time to time as a result of decisions of the US Supreme Court, not to mention decisions of the US Court of Appeals for the Federal Circuit (CAFC). The fundamental elements of the way in which an attorney prepares a patent application has not changed substantially over the last 30 years. However, there are several changes that, nonetheless, have significantly impacted the area of patent law as it relates to patents for software related inventions.

Some of the Most Significant Changes

Since the US Supreme Court handed down its opinion in Alice Corporation PTY. LTD. v. CLS Bank International (frequently referred to simply as “Alice”), questions have circulated about the amount and quality of protection that might be afforded to inventions that are largely implemented in software. The pendulum that swings over time from relatively strong protection of patent rights for inventions implemented in software to relatively weak protection of such inventions, has started to move back to the center and is possibly even moving slightly past center in favor of stronger protection for software inventions. The US Patent and Trademark Office (USPTO) has recently established new guidelines for use by the patent examiners in examining inventions to determine whether they are eligible for patent protection under the laws of the US. The guidelines relate to judicial exceptions to the law that dictates what is protectable under the patent laws of the US, including determining whether an applicant for a patent is attempting to claim patent rights to a “law of nature”, “natural phenomena” or an “abstract idea”, each of which fall within the judicial exceptions to patentability (that is to say, that are outside the scope of things that are eligible for patent protection in the US). The guidelines appear to provide a bit clearer roadmap for those attorneys tasked with preparing patent applications for software related inventions for their clients. In particular, our attorneys have been studying the new 2019 Guidelines for determination of patentable subject matter under 35 USC 101 very carefully to ensure that we take full advantage of the eligibility of software related inventions for patent protection.

Strong Legal Skills Make a Difference

Our attorneys have been practicing patent law for many years and have been vice presidents responsible for directing patent strategy and overseeing and preparing patent applications for public companies, including fortune 100 companies. They have practiced in some of the best law firms and taught as law professors. Their strong legal skills enable them to analyze the changing landscape on which software patent protection treads in a way that ensures that our clients receive the best legal counsel regarding patent eligibility and patent strategy for both preparing new applications and licensing and enforcing issued patents. Preparing the specification and claims of a patent application that discloses and claims a software related invention requires strong legal skills, since small errors in the way the invention is disclosed or claimed can lead to a weakening of the validity and enforceability of the resulting patent, and may even preclude the invention from receiving patent protection at all. Having extensive experience in preparing the specification of a patent application and the drafting of the claims that define the scope of legal protection that will afforded to the resulting patent is extremely beneficial in determining the proper approach to disclosing and claiming the invention. Such experience can assist an attorney in understanding the USPTO guidelines on patent eligible subject matter and taking full advantage of the guidance that the USPTO has provided. There are many nuances and subtle differences in both the disclosure and the claims of a patent application directed to a software related invention that can mean the difference between a strong, enforceable patent and one that is either weak or unenforceable, for having claims directed to subject matter that is not eligible for patent protection. Understanding these differences comes with experience, as inventors that have had dealings with a patent attorney can tell you. We take pride in the level of legal talent, experience and strategic intelligence that our attorneys bring to the representation of our clients.