GUIDANCE ON HOW TO GET A US SOFTWARE PATENT.

Some patents for computer implemented inventions have been successfully revoked in the face of allegations that they relate to abstract ideas and consequently are not patentable in the US.

Intellectual Ventures LLC v. Symantec Corporation provides guidance on how to draft a patent specification that would overcome such an attack. In this case, the invention was regarded to relate to a specific machine configured in a specific way, comprising three different computing systems and a telephone network.  The court declined to agree that the invention was directed to an abstract idea.
The Intellectual Ventures patent that was attacked by Symantec, US 5,987,610, was described as being generally directed to screening computer data for viruses within a telephone network before communicating the computer data to an end user. At least a portion of the computer data is not communicated if the data is found to contain a virus.
At the heart of the issue, is whether application of the two-step Alice analysis (Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347,2355 (2014)) finds that the inventions claimed is patent ineligible under 350.S.C.101. In this analysis, courts must determine:
·      if the claims at issue are directed to a patent-ineligible concept; and
·      If so, look for an inventive concept, that is, an element
or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent for the ineligible abstract concept itself.
Symantec argued that the claims are directed to abstract ideas, and because the added computer-related limitations are merely generic and do not add invented concepts beyond the abstract ideas in themselves, none of the claims eligible.  Intellectual Ventures responded that:
·      the claims provide a solution necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks;
·      the claims specify interactions yielding results that override the routine and conventional sequence of Internet computer events; and
·       the invention as claimed resolves a particular Internet-centric problem.
Claim 7 is: A virus screening method comprising the steps of:
routing a call between a calling party and a called party of a telephone network;
receiving, within the telephone network, computer data from a first party selected from the group consisting of the calling party and the called party;
detecting, within the telephone network, a virus in the computer data; and
in response to detecting the virus, inhibiting communication of at least a portion of the computer data from the telephone network to a second party selected from the group consisting of the calling party and the called party.
Dependent claim 7 recites as follows:
The virus screening method of claim 1 further comprising the step of determining that virus screening is to be applied to the call based upon at least one of an identification code of the calling party and an identification code of the called party.
The court agreed with Intellectual Ventures that computer viruses are a problem specifically arising in the realm of computer networks and computers and that the human mind cannot screen for computer viruses within the telephone network or elsewhere. Computer viruses are computer-centric and cannot be obstructed away so broadly. Furthermore, the human mind cannot perform the steps described in the specification for implementing screening functionality in a telephone network.
The specification went to some great detail describing how the invention was implemented.  His Honour regarded the detailed technical disclosure favourably and it was noted that at least three computers configured in a specific manner was required. The coordination between a virus detection computer, a sending computer, and the receiving computer was regarded by His Honour as something necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.
His Honour also agreed that the claim was Internet centric, and that the key idea of the patent was that virus detection can take place remotely between two entities in a telephone network.
His Honour followed Alice, stating claims that purport to improve the function of the computer itself or effect an improvement in any other technology or technical field may be patentable. The concept of detecting computer virus installed data, and doing so in a telephone network, does not make sense outside of a computer context. Consequently the patent is not directed to an abstract idea, and recites a specific machine configured in a specific way.
This case suggest the following drafting tips:
·      If possible, draft the application to focus on a solution to a problem rooted in computer technology and specifically arising in technology, for example internet technology.
·      Include features that cannot be solved in the human mind.
·      Include plenty of technical details.
·      Argue that the invention improves the function of the computer itself or effects an improvement in another technology.
·      Recite a specific machine or system configured in a specific way.

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