The U.S. Supreme Court’s Alice Corp. decision barring patents on computer-implemented abstract ideas made it tougher to obtain patent protection for software inventions, but it is not impossible, attorneys say.
The courts have not looked kindly on software inventions that claim something a human being can do in their head or using a pencil and paper, so patent applicants should emphasize the ways in which a computer is integral to the claimed invention, said Erik Paul Belt of McCarter & English LLP.
“What you probably have to do is show that the use of a computer adds something that takes the invention beyond the realm what you can do in your head,” he said. “For instance, performing a million calculations per second is something a computer can do but even a very smart human cannot manage.”
A related strategy would be to include some of the actual computer code in the patent application or to describe specific hardware beyond a standard computer that is necessary to the claimed invention to emphasize how it is more than an abstract idea.
“If you can show that there was a technical problem that you can up with a technical solution to, now you’re telling a better story,” Belt said.