Tips for Patenting Software

August 13, 2019

Software patents have been controversial and problematic. Due to recent U.S. Supreme Court decisions such as Mayo Collaborative Services v. Prometheus Labs, Inc. in 2012 and Alice Corp. v. CLS Bank International in 2014, the patenting of software has depended on whether or not a patent application attempts to patent an abstract idea, a law of nature, or a natural phenomenon, none of which are eligible to be patented.

Relying on Mayo and Alice, the U.S. Patent and Trademark Office and the Federal courts would reject a patent application trying to claim such ineligible subject matter if there is no addition of an inventive element to the underlying abstract idea, law or nature, or natural phenomenon.

A recent decision from the United States Court of Appeals for the Federal Circuit (the “CAFC”) encapsulates what a patent applicant should consider if the claimed invention involves software. In Uniloc USA, Inc v ADP, LLC, decided on May 24, 2019, the CAFC evaluated four different patents owned by Uniloc involving software, finding two patents to be patent eligible, and two patents to be patent ineligible.

The first patent is U.S. Patent No. 7,069,293, which was found to be patent eligible, and which claims a method of distributing software applications to users’ computers from a single source using file packets. The CAFC found that, although the aim of the patent is functional, it “claims a particular improvement in how this is done.” Patents are invalid insofar as they focus on a result or effect, but this patent focuses on a specific means or method of achieving the effect.

The second patent is U.S. Patent No. 6,324,578, which was found to be patent eligible, and which claims a software application launcher that incorporates both user and administrator preferences to allow for on-demand installation of customized software applications. The CAFC disagreed that this amounts to an abstract idea because this patent describes a particular way of using a software application server. The method is innovative because it includes both a software application manager and a configuration manager in each software application.

The third patent is U.S. Patent No. 6,510,466, which was found to be patent ineligible, and which claims the use of a desktop interface allowing users to access a software application server. Uniloc argued that the patent improves on previous software by using “display regions” associated with software applications. However, the CAFC concluded that these display regions are conventional icons. The patent does not impart any functional improvements over a conventional software application server. For this reason, the CAFC determined that the patent claims a result rather than a means, and is therefore patent ineligible.

The fourth patent is U.S. Patent No. 6,728,766, which was found to be patent ineligible, and which claims a network architecture that displays the availability of a software application for installation depending on the user’s licenses. Licenses are maintained on the server so that users can move between computers while maintaining their permissions. Uniloc argued that the ingenuity of its patent lies in associating a license with a user rather than a computer, but the CAFC interpreted the patent as claiming an outcome i.e. an abstract idea. The patent cannot be saved by the way it achieves the outcome, since it merely uses a computer for collecting and displaying information, which is not inventive.

The lessons to be gathered from the evaluation of these four patents indicates that the specific or particular way of achieving an effect using software would be patent eligible, while outcomes and results as well as the mere use of a computer do not render software to be patent eligible. Accordingly, in the Uniloc case, the CAFC confirmed that it is insufficient to describe a specific result achieved by software, even if that result is itself innovative. Instead, patent applications involving software should be drafted to claim a specific or particular method of achieving a result.

Written by Anthony Natoli.  Please note that the above discussion is for general information purposes only. For more information, please contact John H. Choi & Associates LLC at or 201.580.6600.