How to Patent Software and Computer-Implemented Business Methods in the US and AbroadJune 3, 2021 – Alerts
It is well known that in the U.S., abstract ideas, laws of nature, natural phenomena, and products of nature are all excluded from patenting under 35 U.S.C. § 101. This article briefly outlines various U.S. approaches to subject matter eligibility with an eye towards succeeding in patenting domestically and internationally.
In the U.S., computer-implemented inventions such as software and business methods are patentable, yet hurdles abound. When assessing the eligibility of software and business method patents, the U.S. Patent and Trademark Office applies the two step framework of Mayo and Alice. If an invention is determined to be “abstract” in Step 1, it is often a fatal determination unless the Applicant can show “something more,” at Step 2, that transforms the abstract idea into patent eligible subject matter. Many software based inventions and business methods may be determined as “abstract” at Step 1, therefore practitioners must be prepared to show “something more” at Step 2.
Practitioners should ensure that the claimed invention is directed to a specific field of endeavor and that the claims recite concrete technical steps that achieve a result rather than an overly broad “computer apparatus” vaguely claiming ambiguous steps without enough detail to actually achieve the claimed result. Stated another way, the claims should be directed to the manner of achieving a result, rather than the result itself.
Recent cases have explained that including a concrete and specific application of an abstract idea qualifies as “something more” that transforms an abstract idea into patentable-eligible subject matter. This line of cases considers various types of specificity, e.g., a specific element that does a specific function in a specific way to address a specific problem by ultimately achieving a specific result. Practitioners should also outline the nature of the technical problem addressed by the invention while taking care to explain the technical solution chosen by the invention. Numerous recent Patent Trial and Appeal Board cases apply this approach.
Selected Other Countries
Since international jurisdictions each have their own laws and respective bodies of case law governing patent eligibility of software-based inventions and business methods, the opportunities for international patenting are enhanced by being deliberate when drafting U.S. patent applications with a high level of specificity and using the technical problem/technical solution framework.
A generalized summary of various international jurisdictions is provided below, although it is noted that this summary is not an exhaustive examination of international law and that counsel in a particular foreign jurisdiction should be consulted prior to filing in that jurisdiction.
European Patent Office (EPO)
Business methods and computer programs, without more, are excluded from patentability by the European Patent Office (EPO). However, implementation of a technical process on a computer that solves a technical problem with a technical solution is enough to overcome an excluded subject matter objection, provided the claimed subject matter does not fall within the category of schemes, rules and methods for performing mental acts. Regarding business methods, features which are the result of a particular technical implementation chosen from various alternative technical implementations are not per se considered mere business methods. Claiming an outcome-based result, however, may prove fatal if the necessary steps to achieve the result are not also claimed.
In the EPO, key ingredients to successful patenting include drafting patent applications showing with a high level of specificity regarding a technical solution that addresses a technical problem. Because the EPO comprises some 24 national jurisdictions, many of these national jurisdictions may take a similar approach.
The Japanese patent laws define an invention as a “high-level and novel technological thought using the laws of nature.” In order to obtain a patent for a computer program under Japanese law, the following general conditions must be satisfied: the computer program should be capable of being used in industry; it must be novel and progressive; and no prior patent application should have been made. In practice, the Japanese Patent Office (JPO) deems an invention as a "creation of a technical idea utilizing the laws of nature," which can include computer software where such software is, for example, “for doing business, playing a game or calculating a mathematical formula.” Provided that information processing is performed by and “concretely realized” in hardware resources such as a CPU, memory, input device, output device or physical device, patent protection may be available for software. For an invention relating to a business method, a JPO examiner will typically assess whether it is a "creation of a technical idea utilizing the laws of nature." Specific case-by-case examples for assessing whether business method–related inventions satisfy inventive step requirements are provided in the JPO’s Examination Guidelines.
In China, a computer medium implementing various associated steps is considered patentable subject matter, provided that the underlining "method" of implementation is patentable. If the computer medium implements various steps associated with artificial “man-made rules,” such as rules to run a business, these associated steps would likely fall into the category of "non-patentable subject matter." Therefore, the approach in China generally requires that to be patentable, a software invention must be implemented by computer hardware and not as a standalone method.
Business methods and computer-implemented methods are generally excluded from patentability in the United Kingdom (UK) pursuant to the Patents Act of 1977. Examiners, however, interpret the various exclusions narrowly and are principally concerned with whether the claimed subject matter falls within one or more exclusions by applying the Aerotel/Macrossan test.
The Aerotel/Macrossan test comprises four steps:
(1) properly construe the claim;
(2) identify the actual contribution;
(3) ask whether it falls solely within the excluded subject matter; and
(4) check whether the actual or alleged contribution is actually technical in nature.
Thus, when pursuing software based inventions in the UK, practitioners should consider whether the claimed invention can be performed by other means than a computer (Step 1), whether the claimed invention makes a reasonable contribution to its field of endeavor (Step 2), whether the invention falls within the excluded subject matter (Step 3) and whether the contribution identified in Step 2 is actually technical in nature (Step 4).
A well-drafted patent application showcasing the technical problem and technical solution with a high level of specificity may pass the Aerotel/Macrossan test. However, the invention should be technical in nature, involve processing steps that can only realistically be carried out on a computer and make a reasonable contribution to the technical field of endeavor.
In South Korea, an invention can be patented provided it satisfies the three substantive matters of: (1) novelty; (2) inventive step; and (3) industrial applicability. Since 1998, an invention for computer software has been recognized as patentable subject matter having industrial applicability. The software must, however, be claimed in the form of a computer-readable data structure recorded in computer memory or as a program physically stored in a digital medium.
In Canada, there is no prohibition against patenting software-based inventions and business methods per se. In practice, however, they are generally difficult to obtain.
In order to be patentable in Canada, it’s necessary for a computer to be an element of at least one limitation and for the computer to be an essential ingredient for the claimed solution to a technical problem. In cases where a computer is claimed merely for providing context and environment for the invention, a computer is not considered an essential ingredient required to implement the invention.
 See Manual of Patent Examination and Practice, Chapter 2106 Patent Subject Matter Eligibility for a full flowchart and examples applying the two part framework of Alice/Mayo.
 See McRO, Inc. v. Bandai Namco Games America Inc. (CAFC 2016); Enfish LLC v. Microsoft Corp. (CAFC 2016); Trading Techs Int’l v. CQG, Inc. (CAFC 2017); and SRI Int'l Inc. v. Cisco Systems Inc. (CAFC 2019) showing specificity to be a factor weighing in favor of patent eligibility. See also, The Chamberlain Group, Inc. v. Techtronic Industries Co. (CAFC 2019); Electric Power Group, LLC v. Alstom S.A (CAFC 2016); Two-Way Media Ltd. v. Comcast Cable Communications, LLC (CAFC 2017) showing a lack of specificity to be a factor weighing against patent eligibility.
 See, Ex Parte Fautz (U.S. Patent App. No. 14/326,661); Ex Parte Kimizuka (U.S. Patent App. No. 13/871,055); Ex Parte Olson (U.S. Patent App. No. 11/715,923); Ex Parte Savescu (U.S. Patent App. No. 12/468,616); Ex Parte Hannun (U.S. Patent App. No. 14/735,002); Ex Parte Smith (U.S. Patent App. No. 13/715,476).
 See, e.g., Article 52(2)(c) of the European Patent Convention.
 See, e.g., Articles 52(2)(c) and 52(f) of the European Patent Convention.
 The member countries of the European Patent Convention are: Albania, Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Macedonia, Monaco, the Netherlands, Portugal, Romania, Slovenia, Slovakia, Spain, Sweden, Switzerland, Turkey and the United Kingdom.
 See, Eligibility for Patent and Industrial Applicability (Main Paragraph of Article 29(1) of the Patent Act) effective for examination on and after April 1, 2018.
 See, e.g., Section 1(2)(c) of the UK Patents Act 1977.
 See, e.g., Aerotel Ltd v Telco Holdings Ltd & Ors Rev 1 2007 RPC 7.
 Law No. 121, April 13, 1959, amended by Law No. 30, April 26, 1978.