What are some tips to get software patent application approved by USPO?

I'm responsible for the software development at a startup, and to protect our Intellectual Property I need to submit multiple software inventions to our 3rd party patent attorney company for patent applications to USPO.

Inventions are for embedded software, mobile GUI apps, and backend system management.

2 Answers 2


Usually your patent attorney, assuming he has good prior experience in this domain, will ask you the right set of questions to ready your application and as an inventor you must do your best to answer those questions as clearly and accurately as possible. One tip based on some common issues faced in software prosecution in my experience is to be as clear as possible on meanings of terms, buzz words, etc. to fall back on to differentiate against the ample publication in this space. Vague usage and being vague on the details on how the invention can be implemented can be hurtful. An example or use cases also help.

If possible, consider having the 3rd party do a preliminary prior art search on the inventions so you have an early understanding of whats out there in that domain and also some understanding of how prosecution at USPTO works - such as how existing knowledge can be used in unexpected ways against your invention during prosecution. In my experience, prior art searches often help inventors structure their thought process and provide clearer details on novel features.


In addition, under recent case law (Alice and its predecessor cases going back to State Street Bank) teach that you will need to define your "invention" -- i.e., write claims -- that demonstrate a particularly useful (transformative?) result. Just "computer-enabling" a known process is likely to not meet that standard (since, after all, the result is the same as not computerizing the process, even if the computer is faster and more efficient). The "computerization" itself must lead to a useful, new and non-obvious benefit. A skilled patent attorney with many years successfully drafting software patents will not try to formulate broad abstract claims that don't meet these tests, but will rather focus on the computerized steps in the process where computerization provides a benefit not otherwise (easily) obtainable.

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