No matter what industry our clients are operating within, SHIP Global IP is finding that many companies are having difficulties figuring out the current state of patent eligibility for software innovations. Sometimes, these clients are being told that they shouldn’t bother with patenting software. They’re told that subject matter eligibility for software is uncertain and that software patent claims can be easily designed around even if they are valid.

Unfortunately, that advice too often sets a company’s economic fortunes sailing in the wrong direction. Software already added more than $1 trillion to American gross domestic product (GDP) by 2017, and all indications are that the sector will become even more valuable. While it’s critical to address vague or functional claim language during patent prosecution, the vindication of software-related patent rights in several countries shows that many myths about software patentability are simply untrue.

Addressing the Uncertain State of Subject Matter Eligibility for Software Inventions

Courts or agencies assessing patent claim validity look at several criteria important to patent rights. First, an invention must be novel to be patentable. Novelty looks at whether the invention is fully anticipated by previous patent claims or printed publications. Second, the invention must be non-obvious. A more difficult question, non-obviousness asks whether a few patents or publications in combination placed the claimed invention within the state of the technical art when the patent claims were filed. Patent owners also have a written description requirement, which requires the specification to disclose embodiments of the technical invention that enable the patent claims.

While most patents can be drafted to address these statutory criteria, subject matter eligibility issues are far more challenging for patent owners in the software space. Inventions embodied in software are often claimed in terms of components performing computer-implemented methods. Several jurisdictions have developed legal frameworks that seemingly discourage software patentability:

• In the United States, the Supreme Court’s 2014 Alice Corp. v. CLS Bank International ruling created a new patent eligibility framework for software that requires claimed technologies to improve underlying computer functionality rather than perform a method via generic computing components.
• Australia also has a technical innovation requirement that asks whether the claimed invention improves the computer itself.
• Patent law in the European Union, United Kingdom and Brazil expressly prohibits patent claims to be granted for software or computer programs claimed as such.

Eight-Figure Jury Verdicts Prove Software Patent Claims are Valid and Valuable

The idea that software is per se unpatentable, however, misses the point that software patent owners have been seeing successful outcomes from litigation. Even in the U.S., where subject matter eligibility for software seems most uncertain, major software companies like VMware and Adobe have been ordered to pay tens of millions in damages during 2023 for selling software products infringing on patent claims.

Other countries with laws preventing patent claims for computer programs are also seeing legal decisions that recognize that software functions in computing technologies need not always lead to an invalidity finding. In late November, the UK High Court of Justice issued a ruling finding that patent claims covering an advanced neural network (ANN) did not meet the computer program exclusion to patentability. The High Court’s analysis noted that the claimed improvement to ANN technology represented a contribution to the technical art even where the claimed ANN was emulated by software.

Claim Drafting Tips for Avoiding Patent Eligibility Concerns for Software Innovations

Innovators from any industry who are inventing computer technologies embodied in software rather than hardware can improve their patent eligibility chances by:

• Focus on the technical problem solved by the novel features of your computer-implemented method. Many software patentees are tempted to claim their innovations with the use of functional language. However, focusing on the technical elements of a computer-implemented method that improves encoding, decrypting or other fundamental computing technologies have a higher chance of survival.
• Draft claim language more narrowly than usual. Courts and government officials calling for reduced patent eligibility for software are usually concerned about the use of overly broad patent claims that could be asserted against everyday business office activities.
• Connect non-technical features of an invention to technical claim elements. Even if an invention is mainly directed at a business method, connecting non-technical improvements in document classification or corporate budgeting to the technical elements achieving those improvements can support patentability.

SHIP Global IP wants each of its clients to operate with confidence that they can protect their computer-related innovations. Contact us today to learn how our global patent prosecution network can secure market share for your software inventions.