November 7, 2014

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Yes, You Can Still Patent Your Software


Yes, You Can Still Patent Your Software

UB Voices By Workman Nydegger

By Michael J. Frodsham, Patent Attorney, shareholder and member of the Board of Directors at Workman Nydegger - Salt Lake City, Utah

November 7, 2014

Company leaders holding software patents are justifiably nervous in view of public comment, and recent legal pronouncements nullifying software patents held by others.  Much of this centers on the notion that software patents are overly broad, or too “abstract,” and put too many conventional business practices at issue when given the broadest reasonable interpretation.  That is, since computer patents recite generalized method steps, and the components that perform the steps are often conceptual or intangible (e.g., “a processing module,” or “an interface component”), there is a concern that software patents can be read to cover almost anything, and continue enabling a host of negative consequences.

Recent federal court cases have tackled the problem of abstract patents head on.  For example, applying the bedrock principle that “an idea is not itself patentable,” the U.S. Supreme Court recently clarified that it is also not enough to merely add a computer system to generalized method steps claimed in a software patent application.  Specifically, the Supreme Court stated that “method claims, which merely require generic computer implementation, fail to transform that abstract idea into a patent-eligible invention.” 

Stated another way, the fact that a patent claim recites an abstract idea does not inherently make the patent invalid, so long as there is some other “transformation.”  That transformation needs to be something “designed to solve a technological problem in ‘conventional industry practice,’” rather than “simply appending conventional steps, specified at a high level of generality,” to a method already known by others.  This reasoning fits squarely within the general requirements of all patents, i.e., that they:  (i) provide a useful solution to a technical problem; (ii) be new or different from what is already known; and (iii) be non-obvious from what is already known.

Some more recent decisions after this Supreme Court case add clarity to this point.  For example, a recent federal appeals court decision held that certain “device profile” data structure claims in the patent were ineligible subject matter since they merely recited data structures for transforming information without any other limitation to a “process through which this information is obtained or the physical medium in which it is stored.”   The court also noted that the other method claims in the patent were similarly ineligible at least in part since they did not “require input from a physical device.”  In another case, a federal district court stated that “a method for facilitating an exchange of information” between parties was ineligible for patent protection, since there was no requirement for computer interaction, i.e., that each of the steps could be practiced by humans using well known processes.

On the positive side, the United States Patent and Trademark Office’s (USPTO) appeal board recently decided in a case that certain patent claims had eligible subject matter because they recited a computer system and some of its actions in the claims themselves.  Specifically, the patent recited a method where an “authentication host computer” would insert an “authenticity key” into an electronic file, and return the electronic file to a client for later use in location of a preferences file.  While the USPTO ultimately found the patent invalid on other grounds, the USPTO agreed that the claimed subject matter was otherwise patentable, at least in part since the methods did not recite “centuries-old” practices, and since the recited data transformations were distinguishable from other instances of merely gathering data (like any human might do).  This is very useful guidance for drafting claims that should survive scrutiny. 

Going forward, inventors desiring to obtain software patents might first ask a couple of questions:  (i) can a human perform the steps we are proposing (i.e., does this merely automate what is already known)? and (ii) what technical solution are we providing that was not already available?  Assuming they can answer these questions favorably, the inventors will need to work carefully with their patent drafter to ensure that the patent applications include:  (i) the problem(s) to be solved; (ii) one or more solutions to the problem(s); and (iii) claims that are directed to computer executions, and are different and non-obvious over what was done previously in any form, especially by humans. 

In sum, there is hope for software innovators that carefully review and follow the recent court guidance.  Although the pendulum may be shifting away from easy allowance and enforcement of software patents, companies following best practices can continue to use patents to protect their software innovations, so long as they avoid the temptation toward impermissibly broad disclosures and claims.   

Michael J. Frodsham is a patent attorney specialized in the preparation and prosecution of patent, trademark and copyright applications in the computer, chemical, and medical arts, and related strategic counseling. He is a shareholder and member of the Board of Directors at Workman Nydegger in Salt Lake City, UT. He can be reached at and 801-533-9800.

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