IP Insights
I hear this question constantly, and I understand why there's confusion. After the Supreme Court's 2014 decision in Alice Corp. v. CLS Bank International, a lot of people — including some patent attorneys — started saying software couldn't be patented anymore. That's wrong. Software patents are harder to obtain than they were before Alice, but thousands are still granted every year. The key is knowing how to frame the application.
The Alice decision established a two-step test for determining whether a software-related invention is patent-eligible. First, the examiner asks whether the patent claims are directed to an abstract idea. If so, the second step asks whether the claims include an "inventive concept" that transforms the abstract idea into something patentable.
In plain English: you can't patent the idea of "doing X on a computer." Claiming that you've invented a method for organizing data, performing a financial calculation, or managing a process — and the only new thing is that you're doing it with software — won't cut it. The USPTO will reject it under Section 101.
But if your software does something technically specific — if it solves a particular problem in a way that improves computer functionality, processing speed, data security, user interfaces, or system architecture — that's a different story entirely.
Post-Alice, successful software patents share certain characteristics. The claims focus on a specific technical implementation, not a general business method. They describe how the software achieves a concrete technical improvement, not just what result it produces.
Examples of software inventions that remain patentable:
Notice the pattern. Each of these improves how the computer operates, not just what task it accomplishes. That distinction is everything in software patent prosecution.
This is where most software patent applications fail — not because the invention isn't patentable, but because the application doesn't describe it correctly. I've seen brilliant technical innovations get rejected because the patent attorney wrote claims that sounded like a business method instead of a technical solution.
When I draft a software patent application, I focus on several things:
The technical problem. What specific technical challenge does the software address? Not "it helps businesses manage inventory" but "it reduces memory consumption when processing large datasets by implementing a particular data compression scheme."
The specific implementation. How does the software solve that problem? The specification needs to describe the architecture, the data flow, the algorithms, and the specific technical choices that make the invention work. Flowcharts, system diagrams, and pseudocode all help here.
The improvement. What measurable technical improvement does this provide over existing approaches? Faster processing? Less memory usage? More accurate results? Better security? Quantify it when possible.
The claims. The claims need to recite technical elements and steps, not abstract concepts. Instead of claiming "a method for optimizing supply chain logistics," you claim the specific data structures, processing steps, and system interactions that achieve the optimization.
The most frequent mistake I encounter is applications that describe what the software does but not how it does it. A patent examiner reading your application should understand the technical architecture, not just the user-facing features. Saying your app "uses artificial intelligence to recommend products" tells the examiner nothing. Describing the specific neural network architecture, training methodology, and inference pipeline tells them everything.
Another mistake: writing claims that are too broad. I understand the instinct — you want the widest possible protection. But overly broad software claims trigger Alice rejections. It's better to start with specific technical claims that clearly pass the eligibility test and then carefully broaden in dependent claims and continuation applications.
The third mistake is skipping the provisional application. If you're a software developer, your technology evolves fast. A provisional gives you 12 months of protection while you continue developing, and it's much less expensive than a full application. File a provisional covering your current implementation, then update the non-provisional with improvements before the year is up.
Software patents sit at the intersection of law and computer science. Writing effective claims requires understanding both the legal framework and the technology itself. When I'm drafting a software patent, my engineering background — I hold an MS in Mechanical Engineering and a BS in Aerospace Engineering — isn't just helpful. It's essential.
I spent over 12 years at IBM as a Senior Attorney, working with some of the most complex software and semiconductor technologies in the world. That experience means I can talk to your developers in their language, understand the actual technical innovation (not just a marketing summary of it), and translate it into patent claims that satisfy both the USPTO and the courts.
Patent attorneys who lack technical training often struggle with software cases. They either write claims that are too abstract (triggering Alice rejections) or too narrow (providing inadequate protection). The sweet spot requires genuine understanding of how software systems work.
There's an interesting thing happening in our part of New York. The Hudson Valley has a growing technology sector, with roots going back decades to IBM's East Fishkill semiconductor facility. Today, you'll find software companies and tech startups throughout Dutchess County, from Beacon's growing creative-tech scene to the engineering firms in Poughkeepsie and Newburgh.
Many of these companies are developing genuinely innovative software. IoT applications for agriculture and environmental monitoring. Manufacturing automation systems. Healthcare data platforms. Security tools. These are real technical inventions that deserve patent protection — and can get it, with the right approach.
If you've built something technically innovative and you're wondering whether it's patentable, the answer is probably more encouraging than you think. The question isn't whether software can be patented. It's whether your specific innovation has been properly framed for the USPTO. That's a conversation worth having.
Disclaimer: This article is for informational purposes only and does not constitute legal advice. Every situation is different. If you have questions about your specific intellectual property needs, please contact our office for a consultation.
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