Patenting Software-related Inventions


Subject matter eligibility is one of the most rapidly evolving issues in Patent Law. The US Courts have avoided defining what qualifies as an abstract idea. Most of the software related inventions are being considered patent ineligible based on the Alice case.

The Alice case gave us a two-part analysis for determining whether software claims are eligible for patenting. First step in the analysis is to “determine whether claims at issue are directed to one of those patent ineligible concepts”. If the claims are directed to a patent ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually” and as an “ordered combination” to determine whether there are additional elements that “transform the nature of claim” into a patent eligible application. Using this analysis, the Courts have found most software related claims to be patent ineligible.

Given below is a summary of the decisions, given over the last 5-7 months, that have found software patent claims to be patent eligible.


Enfish LLC v. Microsoft Corp. (May 12, 2016)


The patent at issue was related to a method and system for taking, transmitting, and organizing digital images. In this case, the Federal Circuit explained that the claims at issue improve computer operations. Under the guidance of this decision, if a software-related claim is properly framed as even slightly improving computer operations, it may be patent eligible, thus avoiding part two of the Alice analysis.


Bascom v. AT&T (June 27, 2016)


This case was mainly focused on the second step of the Alice test. The invention recited in the claims was of a system for filtering internet content. Under Step 2A of the Alice test, the Federal Circuit agreed with the district court that the filtering of content is an abstract idea because “it is a long-standing, well-known method of organizing human behavior, similar to concepts previously found to be abstract.” The Court, however, found that the specific order of the steps in the claim was unique. This unique order of steps provided advantages over previously used methods. According to the Court, the resulting advantages transformed the claim into an inventive concept that was more than an abstract idea, satisfying part two of the Alice test. Thus, the Federal Circuit determined that the inventive concept was found in the ordered combination of claim limitations. Under the guidance of this decision, a software claim that does not improve computer operations may be transformed into a patent eligible claim if the order of steps in the claim provides an advantage over prior art methods.


McRO v. Bandai (September 13, 2016)


The patent relates to a computerized method for lip synchronization of animated characters that replaced manual processes, which were both time consuming and inaccurate. In Alice, the Supreme Court held that using a computer to automate a manual process is not patent eligible. However, the Federal Court in McRO found that the steps of the claim not only automate a manual process but also improve upon the manual process. It was this improvement in the lip sync process that the Court emphasized on when deciding that the claimed method was not abstract. Under the guidance of this decision, a claim that automates a known manual process and improves upon it in general may be patent eligible.

In the light of the foregoing, it is important to ensure that the invention is explained in detail and that an unconventional method or system or an unconventional computer component is present in the claim. This would help in proving the patentability of the claimed process. Secondly, the inventive concept can be found in the ordered combination of claim limitations. Lastly, a solution to a problem or a particular way to achieve a desired outcome can also make an invention patentable.

With all these in mind, there may be a ray of hope for software inventions and surely there would soon be another case from the Federal Circuit that would find at least some software patent claims to be patent eligible.


Authored by Anjali Santhosh


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