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There are a lot of discussions about Software Patents in the Post-Alice environment. People suggested that it introduces great uncertainty in what could be claimed, if anything. I found a USPTO publication of some examples that seem to clarify the issue.

What can an applicant do to improve his or her chances of having a software patent approved, in light of Alice? If someone were to follow the examples set forth in this document, would that improve the chances of being allowed?

  • This is an interesting question. Unfortunately, I don't think that, in the current state of the law, it can be answered objectively here. Only courts can really tell you what effect Alice will have, and it's new enough that it's hard to tell. Unfortunately, asking "What do you think?" is often a sign of a question not being a great fit for our Q&A format. I'd appreciate if you could whittle your question down to something a bit more specific, although I'm not sure what that would be. – Matthew Haugen Mar 6 '15 at 1:38
  • This would be a great question to ask about in Ask Patents Chat, but unfortunately our chatroom isn't particularly active nowadays. I do certainly welcome you to ask it there and see if you get any responses, though. That is what it's there for! – Matthew Haugen Mar 6 '15 at 1:39
  • I rephrased my question. – Pol99 Mar 6 '15 at 19:16
  • I edited your question again. Nobody can tell you with any certainty what will or will not get through the Patent Office, or the courts for that matter. But I think the new question speaks to the same theories, and it is more allowable. I've reopened the question. If these edits don't speak to your goal, let me know and we'll see about rephrasing it again. As I said, this is an interesting question, it's just hard to answer objectively at this point, there isn't much data. – Matthew Haugen Mar 6 '15 at 19:23
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People suggested that it introduces great uncertainty in what could be claimed, if anything.

I think the "if anything" there is a little gratuitous. Granted, the Alice opinion didn't go very far in clarifying what is or is not an "abstract idea". But, last time I read it, it certainly implied the possible patentability of claims that purport to "improve the functioning of the computer itself" or "effect an improvement in any other technology or technical field".

In this interpretation, the claims in Alice failed because "shadow accounts" are not sufficiently technical. Supposedly, if shadow accounts were sufficiently technical, patentability analysis would hinge on 102/103.

What can an applicant do to improve his or her chances of having a software patent approved, in light of Alice?

It may help formulate good patentability arguments if each claim includes some technical features. This is admittedly quite a subjective guideline.

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At this point, the best advice is to look at the example "Abstract Idea" claims provided by the USPTO. The examples show what the USPTO believes to be patent eligible and patent ineligible when analyzed under the 2014 Interim Guidance.

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    Yes, that's what I did (see my question) and it confused a hell out of me. I had a hard time to comprehend the difference between eligible and ineligible claims, – Pol99 Mar 10 '15 at 0:31
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In my opinion you cannot really patent software since software is not a static representation of intellectual property. You could attempt to write an application claim that is software-based, but risk limiting your claim doing so. You can include limitations involving memory that embodies software instructions, since memory is something physical, but a software program is really not something tangible; it's actually dynamic and requires execution. Without revealing more about more special technical features about your software program in the claim's limitations, you might be better off considering software licensing.

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    By that reasoning, methods would not be patentable either, as they require execution and are not physical. – Maca Mar 1 '17 at 6:57
  • That is a valid opinion, it's just not d'accord with the (especially US) patent law, nor does it adress the question. – DonQuiKong Mar 1 '17 at 10:06
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    @Maca: I never said method claims have to be physical; my point was that you're not patenting the software, but a software-based claim, which are two different things... – nhunsaker Mar 2 '17 at 16:41

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