As I understand, the Alice decision set up a two-step rule for determining patent eligibility. Subsequent rulings in the U.S. (like McRO, Inc. v. Activision Publishing, McRO v. Bandai Namco Games America, Enfish LLC v. Microsoft, and Amdocs v. Openet Telecom) have been favorable to software patents and have clarified the landscape a bit.

But when drafting claims directed to software inventions, what are the best and/or most used strategies for avoiding Alice-based §101 rejections? I recall reading that a strong post-Alice strategy is to write the claims in means-plus-function language which refers back to specific hardware in the specification. Is this the best approach? Are there other approaches that don't limit the claims as much?

  • 1
    Ask yourself what your software does to the real world and put that info a claim. Or are you asking for more specific advice? Because I don't think there is any (yet). But I'd love to be proven wrong there anyways ;) – DonQuiKong Jan 20 '18 at 16:31
  • @DonQuiKong, thank you for the suggestion! I'm looking for more specific advice (if it exists). I'm imagining strategies like (a) use means-plus-function, (b) make sure any described function refers to a specific piece of hardware (more specific than just "a processor"), (c) don't just describe the hardware, but also describe any physical connections/configurations that enable the specific functionality, etc. (As a disclaimer, the last one might not make sense! But those are the sorts of things I'm wondering about.) – jdpatent Jan 20 '18 at 16:35
  • @DonQuiKong, by "what your software does to the real world" do you mean "what your software does to the hardware"? That could be useful guidance. It might suggest referring to data structures, etc.? – jdpatent Jan 20 '18 at 16:36
  • the opposite (though I'm basically guessing here), I imagine that describing something on bit-level won't help, but rather how it makes something behave on the top level. Like, I don't know, - X happens and obviously it happens by software because it can't happen by hand - instead of - doing X in software on a pc with motherboard and means for storage etc. - – DonQuiKong Jan 20 '18 at 16:53
  • @DonQuiKong, your comment "X happens and obviously it happens by software because it can't happen by hand" seems to be on the right track, and I think the key is unpacking the implications of "it can't happen by hand." The software must have novel and nonobvious implications at some hardware level--I think that's what the Alice decision intended to imply. At least, I remember reading something that suggested this fairly soon after the decision came out. – jdpatent Jan 25 '18 at 22:24

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Browse other questions tagged or ask your own question.