How to determine whether software is patentable - Part 5

We had such a positive response to our four-part series on How to Determine Whether Software is Patentable that we have added two more bonus parts to the series.  This is part 5, which explains another criterion that you can evaluate to help determine whether your software is patentable in the U.S. If you are an inventor, an executive at a tech company, or a patent lawyer outside the U.S., this will help you to at least make a first pass determination of whether your software is worth considering for patent protection.

In this article, we will focus on whether your software brings about an improvement to computer technology.

If your software does improve computer technology, that weighs in favor of your software being patentable, although it is not a guarantee. If your software does not improve computer technology, that does not necessarily mean that your software is not patentable, but it is a factor to take into account, in combination with all of the other factors that we discuss in this series. We do get software patents granted for our clients all the time that do not necessarily improve how a computer operates technically. 

What does it mean for software to improve computer technology?  This factor comes from some court cases that have said that if a particular piece of software represents an improvement to computer technology per se, then that software is not an abstract idea, and therefore cannot be rejected for being an abstract idea. An abstract idea rejection can be quite challenging to overcome, so if you can avoid getting such a rejection by showing that your software improves computer technology, you will make your life a lot easier when you try to obtain a patent on that software.

You might wonder what it means for software to improve the operation of a computer? Unfortunately, the law is not very clear on this point, but I can give you some clear examples just to help you understand the basic idea.

First, consider an example that does not involve software. If you invent a new circuit that could be used as part of a microprocessor to enable the microprocessor to perform multiplication more efficiently; that would be an improvement to computer technology, because it improves how a microprocessor operates by making it capable of performing multiplication more efficiently, and multiplication is a fundamental function performed by a microprocessor. If you put that microprocessor into a computer, it will enable the computer to perform computations more efficiently.  As a result, the new circuit in the microprocessor is an improvement to computer technology.

That example is very easy to understand because it involves hardware, not software. What does it mean for software to constitute an improvement to computer technology? As an example, if you write software that enables a computer to perform multiplication more efficiently, I would argue that such software is an improvement to computer technology just as much as the circuit is, for all of the same reasons. Once you have installed your improved multiplication software on a computer, that software enables the computer to perform multiplication more efficiently than it did before, just like the circuit in the microprocessor enables the computer to perform multiplication more efficiently.  Therefore, I would argue that the improved multiplication software should be considered to be an improvement to computer technology.

I use the word “should” here because, in practice, there is disagreement among patent examiners and judges about whether the multiplication software I described should be considered to bring about an improvement to computer technology. Some people argue that because the software is performing multiplication, the invention is directed to an improvement in mathematics, not an improvement in computer technology. If I received a rejection on this basis, I would argue that what has been invented is a way for a computer to perform multiplication more efficiently, and that the invention, therefore, brings about an improvement to computer technology and not merely to mathematics. From this example you can see how this can lead you to be easily bogged down in this kind of an argument with a patent examiner.  We have, however, been successful in many cases in arguing that this type of software is an improvement to computer technology.

When you are evaluating your own software, I suggest that you ask yourself,

“Does this software enable a computer to do something that it already was capable of doing, but to perform that function more efficiently or effectively in some way?”

Performing the function more efficiently might mean using fewer computations or using less memory or power. Other examples would be software that performs compression or decompression, or encryption or decryption of data. If these types of software produce an improvement in efficiency, you have a very strong case that they are improvements to computer technology and that therefore weighs in favor of the patentability of that kind of software. Whereas, if you develop or improve software that helps employers find new employees, even if the method that your software uses is new and not obvious, it is going to be challenging to argue successfully that the software represents an improvement to computer technology in the way that that term is understood in the law. Although you could argue that a computer that has employee matching software installed on it is a better computer than one without that software installed on it, because that computer can find employees more easily than a computer that does not have that software installed on it, but that type of argument generally does not convince an examiner because such an improvement is not considered to make the computer perform its basic operations -- such as arithmetic, data storage, or network communications -- more efficiently.

I hope you’ve found this article on how to determine whether your software is patentable to be useful.  Next week, I'll release a final in our series on How to Determine Whether Your Software is Patentable. You can also hear these articles and other valuable resources and information on The Software Patent Podcast, available on your favorite podcast players or through this link here.