Drafting Software Patents: Writing a patent application for software or mobile applications and drafting corresponding patent claims are highly technical jobs. Drafting various sections of a patent application is really challenging, as these have to be in accordance with formats specified by the patent office. Specifically, writing patent claims is most crucial part of patent drafting process.
Drafting Software Patents: Drafting Patent Claims
Accordingly, it is not uncommon for patent drafters or patent attorneys to begin the drafting of patent applications by writing claims. The patent claims form the core of the patent application and are aimed at defining the periphery (boundary) of the claimed invention. The most difficult, challenging and technical aspect of drafting patent claims is defining the proposed invention in broadest possible terms focusing on novel (new) and non-obvious (unique & inventive) features, while ensuring that it is not too broad to dilute the core focus.
Drafting Independent Claims
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Generally patent claims are categorised as independent and dependent claims. A patent application generally contains one or more independent claims on which remaining claims depend, which are known as dependent claims. The independent claim defines core structure of the claimed invention by claiming novel aspects.
Software Patents – Mobile Applications Patents
Software patents are highly debatable among all stakeholders and there have been various developments in US questioning the eligibility of abstract ideas that are generally filed under the category of software patents.
Alice v. CLS Bank
After United States Supreme Court’s June 2014 decision in Alice v. CLS Bank, patent eligibility cases have amplified multifold across various district courts, the Federal Circuit, and the U.S. Patent and Trademark Office (USPTO).
As patent attorneys and industry experts will agree, all such cases possess the capability to redefine patent eligibility case law and some of these important post-Alice patent eligibility decisions along with the court’s rationale for each key finding can provide significant insights for patent practitioners.
Patent Strategy Post-Alice
After the Alice judgment, in-house patent counsels and general counsels across multiple technology corporations have formulated or fine-tuned their patent strategy accordingly.
In accordance with US Patent Laws, 35 U.S.C. § 101, or Section 101, defines patentable invention.
§ 101 – Inventions Patentable: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Therefore, for software patents, all the patent eligibility concerns relate to this section. In light of Alice, and guidelines issued by multiple patent offices worldwide, including, USPTO, European Patent Office (EPO), Chinese Patent Office, the Japanese Patent Office, Indian Patent Office (IPO), and the like, patent practitioners are amending their approach as to how the patent is drafted and how the innovation is captured.
Guide to Draft Software Patent Applications Post-Alice
- While writing patent application, patent claims should be categorically aimed at solving a specific problem instead of generic ones.
- Include specific hardware claims instead of describing a general computer.
- Describe in details as to how the claimed method improves upon existing computers (in case of software) and / or handheld devices (smartphones, in case of mobile applications). For example, how method embodiments result in faster computers, better performance of handheld devices (tablets, smartphones) etc.
- Describe improvements over existing technology or technical fields in detail.
- Include multiple hardware architectural drawings to illustrate detailed explanation and embodiments of flowcharts pertaining to method claims.
- Describe the claimed subject matter in detail that can be characterised as necessarily rooted in computer technology to overcome a specific problem.
- Don’t use the specific phrase “means” to avoid the requirements of means-plus-function claiming under Section 112(6).
Additional Intellectual Property (IP) Protection Beyond Patents
Although patent owners are trying hard to keep pace with latest developments pertaining to software patents, it is an effective strategy to employ holistic approach for protecting IP in case of software and mobile applications without relying 100% on patent protection.
- Protection of user interface (UI) and user experience (UX) by way of design patents. For example, in Apple v. Samsung patent dispute, Apple’s lawsuit relied heavily upon design patent protection as Apple alleged that Samsung infringed a number of patents, including a design patent (U.S. Patent No. D627,790 or the ‘D790 Patent) that protected the look of Apple’s iOS user interface on an iPhone.
- Copyright protection for API or action layer, which allows the outside world to communicate with the software. In Oracle v. Google dispute, it was confirmed that APIs can be protected by copyright law. This lawsuit related to Java APIs.
- Trade secret protection for all confidential and proprietary information by way of executing NDAs (non-disclosure or confidentiality agreements), employment agreements, vendor contracts, IP Ownership (Assignment) Agreements, and the like.
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