Software Distinctions and Ideas

Software distinctions from existing software presents a hiccup to many developers with novel ideas.  Software considerations to push for a patent will encounter nuances that need to be addressed.  The approval process has been presenting hurdles for software patent filings.  The hurdles are more about what contribution is being offered by the idea rather than the fact that someone came up with something that could be considered new.

For many idea people, not having a clearly stated specific enhancement to preexisting software in the marketplace has been a stumbling block to filing attempts.  Failing to satisfactorily describe a technical or functional improvements on introducing an innovative idea in comparison to existing software presents a setback.  Not distinguishing the innovation from previous filings and from what appears to be a conventional purpose and function is critical to a filing’s success.

The importance of the strength of the abstract understated.  Idea people must take seriously to iterate the process and function from abstraction to a conceptual point that can be described of the descriptive process about the functionality of the intended software.  What gets lost is the detail necessary to demonstrate valued distinctions that set it apart as a new filing from preexisting related applications and functions in the field within which the software inventor seeks.

This consideration for novelty was taken by the Supreme Court in the Alice[1] case, where the Court iterated the standard for overcoming a Rule 12(b) failure to state a claim for patent eligibility.  As articulated. “a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101.”  Furthermore, the Court has held that “Laws of nature, natural phenomena, and abstract ideas are not patentable.” [2]  In Mayo, the Court stated that on the basis of patentability/validity determination that is determination that is independent of . . . any other statutory patentability provision.[3]  It is in Mayo, that the Court established its two-step process to assess patent filing that only provide for abstract ideas.

Initially, a consideration for the filing’s claim involves a concept that would not be  patent-eligible.  If that is established, then the next step would be to determine if the “the elements of each claim individually or in combination allows the filing to have the nature of the claim transform to a patent-eligible application.”[4]  As the Court filters through patent filings for software, the challenge is to discern what is truly novel and game changing on the software computing field and what is a routine process of imitation with different function, but still achieving the same without development and or improvement.

To this concern, the Court distills between software-related patent claiming an improvement to a process or system from those filings that are claiming language reciting an invention’s pinpoint discernable improvement to what has already been active in computing.  In its own discourse, the Court alludes to the close calls, i.e., “in other cases involving computer related claims, there may be close calls about how to characterize what the claims are directed to.”  That is, “some inventions’ basic thrust might more easily be understood as directed to an abstract idea, but under step two of the Alice analysis, it might become clear that the specific improvements in the recited computer technology go beyond “well-understood, routine, conventional activities” and render the invention patent-eligible.[5]

The Court in Bascom stated that the patent filing claims to “filtering content is an abstract idea because it is a longstanding, well-known method of organizing human behavior, similar to concepts previously found to be abstract.”  But what was distinctive, was the order of description of the specific function for the individual claims apart from what was conventional among computers, Internet Service Providers, networks, and filtering. The analytical inquiry into a claim’s patent eligibility weighs on the specific description of the inventive concept claimed.

The Bascom Court further elaborated, “the claims do not merely recite the abstract idea of filtering content along with the requirement to perform it on the Internet, or to perform it on a set of generic computer components. Such claims would not contain an inventive concept.” “Filtering content on the Internet was already a known concept, and the patent describes how its particular arrangement of elements is a technical improvement over prior art ways of filtering such content.”   The specific location for the filtering system which was to be a remote ISP server and allow the users to have the ability to adjust the filtering for their network accounts, distinguished it from the abstract concept of filtering in general.

Hence, a new way and an improvement was recognized as applicable to the claim being filed for a patent.  Description of steps of claims cannot solely be achieving a process by function but must point to the distinguishing feature of the intended innovation from the conventionally understood prior existing applied for ideas.  In essence, filing hiccups will continue for innovators seeking to file software idea,s as they seek to distinguish their novel idea from existing ones and theyseek to describe how they see distinguishing features, functions and improvements in their intended filing.  The marketplace is full of software application innovations, but ironically, not all are as uniquely distinct and innovative as it is conceived in the mind of the newest software idea person. The rigours of describing distinctions is an absolute point to all novel ideas.

[1]Alice Corp. v. CLS Bank International, 134 S.Ct. 2347 (2014)

[2]Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (quoting Mayo Collaborative Services. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012).

[3] Mayo, 132, S. Ct. at 1303–04 (citing Bilski v. Kappos, 561 U.S. 593 (2010); Diamond v. Diehr, 450 U.S. 175 (1981), Parker v. Flook, 437 U.S. 584 (1978).

[4] Mayo, 132 S.Ct. at 1297.

[5] Bascom Global Internet Services v. AT&T Mobility, LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).