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Can You File a Post-Alice Software Patent?

Obtaining a software patent isn’t an easy process. Alice Corp. Pty. Ltd. v. CLS Bank Intl. had a profound impact on software-related intellectual property rights — leading some inventors and patent examiners to incorrectly believe that software isn’t patentable. However, a series of post-Alice decisions have helped clarify software inventors’ rights. Learn more about post-Alice software patents below.

software patent

The Impact of Alice Corp. Pty. Ltd. v. CLS Bank Intl.

In 2014, the Supreme Court issued its Alice Corp. Pty. Ltd. v. CLS Bank Intl. decision, which deeply impacted an inventor’s ability to patent software and business methods. Under Alice, you cannot patent an abstract idea or the implementation of an abstract idea via software or a computer. This decision resulted in increased:

  • Litigation seeking to invalidate software and business method patents,
  • Difficulties obtaining software patents from the United States Patent and Trademark Office (USPTO), and
  • Confusion about an inventor’s ability to patent software.

These developments have kept intellectual property lawyers busy, as it has significantly complicated their clients’ IP strategies.

Post-Alice Legal Developments

Immediately after Alice, there was distinct chilling in the world of software IP. Software patent applications dropped by 40% immediately after the decision. Investors voiced concern about the viability of software businesses. Thankfully however, software companies and inventors continued filing software patents and developing innovative products. Over time, concerns about post-Alice software patents have calmed — and the courts have also provided us with a better understanding of software patentability.

Importantly, the Supreme Court has never stated (even in Alice) that you cannot patent software and business methods. While some pundits believed that the Alice decision was a death knell for software patents, their fear was greatly overstated. With the help of a skilled software patent attorney, an inventor can patent software.

A series of Federal Circuit software patent cases have clarified Alice and subsequently reopened the door to patenting software in the United States. Some of the most significant post-Alice software patent cases include the following:

Enfish v. Microsoft

Software that taught functional differences between databases are patentable.

Bascom Global Internet Services v. AT&T Mobility

Customizable filtering tools are patentable.

McRO v. Bandai Namco Games America

Software that generated automated lip synchronization and facial expressions in animation is patentable.

software patentAccording to Enfish, “Companies that are able to self-finance their patent portfolio are best served by filing patent applications covering significant software and business method improvements and novel modifications.”

Rather than giving up on a software patent, you should contact an experienced IP lawyer for guidance. A software patent application requires careful analysis, artful drafting, and attention to detail. You typically must clearly delineate the following:

  • The specific problem your software addresses,
  • How you solved this problem technologically,
  • How your software interacts with hardware, and
  • In what way it is innovative or an improvement on current solutions.

In addition, you must do this with enough specificity that a software expert would understand your invention in great detail.

Why Having a Software Patent Attorney Is Important

The USPTO carefully examines software patent applications — especially post-Alice. Moreover, many patent examiners report that they have granted few (or no) software patents since the Supreme Court’s decision. While you might be an adept software developer, drafting a software patent requires a very specific set of skills. For this reason, if you are considering filing a software patent, you should consider hiring an IP lawyer with significant software patent experience. Otherwise, you might make mistakes that lead to unnecessary delays, appeals, or the denial of your software patent.

When you work with an IP attorney, your lawyer will help you assess your invention and prior art. Then, you will collaborate, creating a well-constructed software patent application that clearly describes your invention’s solution, specifications, and innovation. Your lawyer will also help you explain how your software isn’t merely an abstract idea. This may involve drafting claims with varying levels of specificity and technical detail.

Finally, a software patent lawyer carefully follows developments in IP law. The patentability of software is a rapidly developing area of intellectual property law. The software industry is constantly changing — this leads to new innovation and new legal issues. At Bold IP, we anticipate that the Federal Circuit will continue to clarify software patentability over the next few years. If you have questions about a software patent, contact us for more information about the current state of software IP law.

Get a Software Patent With Help From Bold IP

At Bold IP, we understand the challenges associated with a software patent. We help inventors throughout the United States to analyze the inventions’ patentability, draft patent applications, appeal software patent denials, and build comprehensive IP strategies. If you have questions about a software patent, contact us for a confidential evaluation: 888-455-1367. We look forward to speaking with you.


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