The USPTO Gives and Takes Away: More Challenges in Drafting Software Patent Applications
At the same time the USPTO issued new guidance lowering the obstacles software patent applicants face in demonstrating that their inventions are eligible for patent protection under 35 U.S.C. 101, the USPTO also issued new guidance heightening scrutiny of software patent applications under another patent law: 35 U.S.C. 112. This guidance issued on the same date – January 4, 2019 – and directs USPTO patent examiners to require a high level of detail for software applications in disclosing algorithms.
The USPTO’s guidance on Section 112 addresses the issue of functional claiming in software patents. Software in a patent application is generally claimed in terms of the desired function of the software, often because there may be numerous known ways for achieving the desired function. Whatever the reason, the USPTO’s new 112 guidance makes clear that if the patent application does this without describing the algorithm for how the claimed function is achieved, the claim will be considered indefinite and the patent application will be rejected as violating the requirements of Section 112.
The USPTO’s guidance strictly interprets the case law on this issue to require disclosure of an algorithm for every functionally claimed software feature – even those well-known in the industry. In fact, the guidance specifies that this requirement cannot be avoided by arguing that a software developer familiar with the technology could write software to perform the function. Instead, the application must have a “sufficiently precise description” of the algorithm to perform the entire claimed function, whether in words, as a flow chart, or as a mathematical formula. It is a small consolation that whether or not the description of the algorithm is sufficiently precise is determined based on the understanding of a person familiar with the technology.
Moreover, the guidance sets an even higher bar for novel portions of the software. Any functionally claimed portion of the software that is novel and not well-known must be disclosed in sufficient detail to show that (1) the inventor had full possession of the invention and how to achieve it, and (2) to enable others familiar with the technology to duplicate the invention with relative ease. Failure to meet either of these standards will result in rejection of the application.
The heightened scrutiny demanded by the new guidance for Section 112 imposes a heavy burden on applicants and a major headache for their patent attorneys. Not only will they need to disclose their novel algorithms in great detail, they will also need to describe arguably well-known algorithms to adequately support each function performed by their software. To do this, applicants must walk a fine line between too much and too little. Too much detail will not only result in an expensive application, it also risks a narrow scope of protection for their patented invention. Under these guidelines, too little detail could result in no patent at all. All told, the USPTO’s recent guidance on software applications puts applicants squarely between a rock and a hard place.