Examples of Patent-Eligible Claims For Software Inventions

DEREK FAHEY, ESQ.

Software inventions can qualify for patent protection, but claims must satisfy the subject-matter eligibility requirements of 35 U.S.C. §101. After the Supreme Court’s decision in Alice Corp. v. CLS Bank, the USPTO issued guidance and examples to help examiners and practitioners distinguish abstract ideas from patent-eligible technological applications.

Example 21: Internet-Centric Alerts

The USPTO found eligibility where the claim used an ordered combination of limitations to solve an internet-specific problem: alerting a subscriber with time-sensitive information while the subscriber’s computer was offline. The claim did more than place an abstract idea on a generic computer because the limitations addressed a challenge created by network technology.

Example 23: Graphical User Interfaces

One eligible claim relocated text from an obscured portion of an underlying window to an unobscured area. The USPTO viewed the claim as rooted in computer technology and directed to a problem arising specifically in graphical user interfaces.

A second eligible GUI claim used a mathematical algorithm to scale and reposition text in overlapping windows. The ordered limitations improved the computer’s display function rather than merely limiting a mathematical concept to a technological environment.

Example 25: Rubber-Molding Control

Claims modeled on Diamond v. Diehr used software and mathematical calculations as part of a physical rubber-curing process. The combination of temperature data, timing, computer calculations, and automatic press control amounted to significantly more than an abstract mathematical relationship.

Example 27: Remote BIOS Loading

A claim directed to loading BIOS code from a remote storage location was eligible because the claimed sequence controlled processor operation and memory transfer in a specific technological process.

Practical Drafting Lessons

Potentially eligible limitations include improvements to another technology or technical field, improvements to computer functionality, transformation of an article, unconventional steps tied to a useful application, and meaningful limitations beyond simply applying an abstract idea on a computer.

By contrast, claims are less likely to qualify when they merely instruct a generic computer to implement an abstract idea, append routine conventional activity at a high level, or add insignificant extra-solution steps.