Companies of all sizes and in all industries should consider patenting their computer-implemented innovations. Despite recent cases which limit patentability in this area, it is clear that some software and computer- implemented patents are being granted and withstanding in-court validity challenges.

In 2014, in Alice Corp. v. CLS Bank Int’l, the U.S. Supreme Court cast doubt on the patent eligibility of computer- related inventions that can be considered abstract ideas.

A subsequent Federal Circuit case, DDR Holdings, LLC v. Hotels, L.P., upheld claims directed to webpage display technology and suggested several strategies for drafting patent applications for computer-implemented inventions.

First, it suggests drafting new patent applications that describe and claim a solution to a computer-centric problem. The DDR Holdings invention addressed the problem of a website’s visitor being directed away from the host when a user clicks on a link. The reasoning of DDR Holdings suggest that other patent applicants emphasize the technical problems solved in their patent applications. Although it is not always initially apparent, many computer-related inventions that solve business problems often also have aspects that solve computer-specific challenges. For example, it is common for a computer-related invention to have features that address processing efficiency, communication efficiency, device size limitations, storage limitations, and input- type limitations.

Second, the reasoning of DDR Holdings further suggests drafting patent applications that describe a conceptual solution and then further claim and support specific-implementations of the solution. Doing  so  provides express support for an argument in prosecution or litigation that the claims do not attempt to preempt every application of the idea and instead recite additional features specific to one implementation.

In addition to guidance from the courts, the USPTO has provided instructions and examples for Examiners determining subject matter eligibility that suggest patent drafting strategies.

One USPTO example suggests drafting new patent applications that claim and support how an invention achieves a benefit that is more than calculating a value. The USPTO example related to a GUI that relocates obscured text when windows overlap one another to a more visible area. The example provides a sample of patent eligible and ineligible claims. The eligible claim claimed steps for dynamically relocating text within a window based on a detected overlap condition while the ineligible claims were directed to a series of steps for calculating a scaling factor. This reasoning suggests claiming how an invention achieves a specific benefit and, if an invention involves determining a value, claiming how that value is used.

In summary, the reasoning of the courts and USPTO examples suggests at least the following strategies for drafting patent applications related to computer-implemented inventions.  Draft new patent applications that:

  1. Claim and support an invention that solves a computer-centric problem.
  2. Describe a conceptual solution and claim and support a more specific-implementation of that conceptual solution; and
  3. Claim and support the details of how an invention achieves a benefits that is more than determining a value.

A recent suit involving a start-up company in the logistics space, Four Kites, illustrates the application of these points. The company’s product is software which facilitates freight tracking. It was sued by a competitor named Macropoint which held a patent for a similar product. Four Kites was able to prevail by persuading a federal court to invalidate Macropoint’s patent on the basis that the latter was “directed to the abstract idea of tracking freight”. [emphasis added]

The existence of the case is a reminder that regardless of your industry, it is essential to take steps to avoid infringing the patents or other IP of others before investing a good deal of developmental resources. The outcome is a reminder that the drafting of patent claims requires the involvement of patent counsel with substantial familiarity with the courts’ recent pronouncements and their application in the USPTO.