Yes, you can still patent your software.

• Author: Frodsham, Michael J.

CCompany leaders holding software patents are justifiably nervous in view of public comment, and recent legal pronouncements nullifying software patents held by others. Much of this centers on the notion that software patents are overly broad, or too "abstract," and put too many conventional business practices at issue when given the broadest reasonable interpretation. That is, since computer patents recite generalized method steps, and the components that perform the steps are often conceptual or intangible (e.g., "a processing module," or "an interface component"), there is a concern that software patents can be read to cover almost anything, and continue enabling a host of negative consequences.

Recent federal court cases have tackled the problem of abstract patents head on. For example, applying the bedrock principle that "an idea is not itself patentable," the U.S. Supreme Court recently clarified that it is also not enough to merely add a computer system to generalized method steps claimed in a software patent application. Specifically, the Supreme Court stated that "method claims, which merely require generic computer implementation, fail to transform that abstract idea into a patent-eligible invention."

Stated another way, the fact that a patent claim recites an abstract idea does not inherently make the patent invalid, so long as there is some other "transformation." That transformation needs to be something "designed to solve a technological problem in 'conventional industry practice," rather than "simply appending conventional steps, specified at a high level of generality," to a method already known by others. This reasoning fits squarely within the general requirements of all patents, i.e., that they: (i) provide a useful solution to a technical problem; (ii) be new or different from what is already known; and (iii) be non-obvious from what is already known.

Some more recent decisions after this Supreme Court case add clarity to this point. For example, a recent federal appeals court decision held that certain "device profile" data structure claims in the patent were ineligible subject matter since they merely recited data structures for transforming information without any other limitation to a "process through which this information is obtained or the physical medium in which it is stored." The court also noted that the other method claims in the patent were similarly ineligible at least in part since they did not "require...