Shook, Hardy & Bacon Managing Partner Bart Eppenauer has authored an IAM blog post explaining that Federal Circuit decisions "have unequivocally confirmed that software is patentable in the post-Alice world as long as certain important rules are followed." According to Eppenauer, the court's five positive decisions since Alice "have provided much needed clarity to the Section 101 landscape," while even those judgments finding the subject patents invalid under Section 101 "also provide direction on the type of claims doomed to fall into the abstract, ineligible real."
In particular, Eppenauer notes, the court's opinion in McRo Inc. v Bandai Namco Games "illuminates a successful path for claiming an invention that involves a new method for producing a desired result," by looking at "whether the claims 'focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes or machinery.' (emphasis added)."
"The key issue in this respect is whether the use of a computer incorporating the claimed advancement performs a distinct process to deliver the automation (eligible), or whether the computer-automated process and the prior method are carried out the same way (ineligible)," concludes Eppenauer, who addresses the three patents found ineligible in Intellectual Ventures v Symantec, as well as other Federal Circuit opinions affirming ineligibility because the patent claims at issue (i) were "'so result-focused, so functional' as to effectively cover any solution to an identified problem," (ii) fell within the "realm of abstract ideas," (iii) contained "no technical solution," (iv) did not "call for any form of computer implementation," and/or (v) failed to "introduce a technical advancement or improvement."
The clear takeaway is that software-related inventions are most assuredly patentable, when described and claimed properly. Patent applicants will continue to see success if they file patents:
(1) with a specification that tells the story of the invention, including the advantages, technical benefit and practical application with as much technical detail as possible, and if the invention uses a computer, describing why that is important, specifically how it is done, and what technical improvement is provided; and
(2) with claims directed to a solution to a technological problem that incorporate specific elements demonstrating how the invention is implemented to achieve a technological improvement. In other words, make it technical, make it specific, and describe and claim how to do it (rather than just what it will do).