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Can Software be Patented?


A question frequently posed to the patent attorneys of JRG Attorneys at Law is whether software related technology is patentable. This question is typically asked by emerging companies or by employees of companies that deal with software related technology, which are only increasing in number as the digital, internet age continues. When we say “software” in this context, we are referring to any invention where a dominant part of the inventive concept is manifested in executable machine instructions rather than a unique tangible object.

Alice Corp. v. CLS Bank Sets Controversial Precedent

The concern about whether “software” is patentable can be attributed to the 2014 Supreme Court decision Alice Corp. v. CLS Bank International (“Alice”). The Alice decision stated that an escrow procedure that has been performed for years by people was not patentable subject matter when implemented on a computer network. The Alice decision has been interpreted — incorrectly so — as disallowing software as patentable subject matter. Moreover, patent eligibility of software is a hot topic in the United States in view of the Alice decision because who wants to spend time, energy, and money developing software related technology that — allegedly — cannot be protected under the patent laws in the United States, which allows free-riders to misappropriate one’s technology?

What Can be Patented Then?

To qualify as patentable subject matter, an invention must satisfy two criteria: one statutory andone judicial. The patent statute defining patentable subject matter is governed by 35 U.S.C. § 101.

There are four specific categories of patent-eligible subject matter:

  1. Processes
  2. Machines
  3. Manufactures
  4. Compositions of matter

If the patent claims are directed towards any of the aforementioned categories, then the patent is presumed to be patent-eligible subject matter. The analysis doesn’t end there, though, since the invention must also overcome a judicial hurdle, i.e., “judicial exceptions.” The U.S. Supreme Court has identified a set of “judicial exceptions” that can transform patent-eligible subject matter back into patent-ineligible subject matter. These “judicial exceptions” include laws of nature, natural phenomena, and abstract ideas. Software often falls under the abstract ideas category and therefore is commonly determined to be patent-ineligible.

Introducing the “Mayo Test” & USPTO

From the Alice decision, we learned that in order for software related patents to be patent-eligible, they must pass muster not only under 35 U.S.C. § 101 but must pass muster under the two-part Mayo Test.

The Mayo Test assert the following requirements:

  • Are the claims at issue directed to an abstract idea; and, if they are,
  • Do the claims contain “an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.”

The U.S. Patent and Trademark Office (USPTO) as well as courts in the U.S. are now using the two-part test to analyze subject matter eligibility of software patent claims. Assuming arguendo that the claims are directed to an abstract idea — the first step of the multi-step test — step two of the two-part test requires a determination as to whether any elements or combination of elements in the claims are sufficient to ensure that the claims amount to “significantly more” than the underlying abstract idea. To overcome this hurdle, the USPTO has recently provided some well-needed guidance and policy based on case decisions and pedagogical examples showing the exact type of software related claims that are considered to be patent-eligible and not abstract ideas.

The recent guidance provided by the USPTO indicates that “software” can be protected in the U.S. if it is unique, tied to a machine, and meets the requirements of two-part test identified above. The “unique” requirement is a shorthand way of saying the invention must be novel, useful, and nonobvious, which are core patentability requirements for any invention. Accordingly, if you work with “software” and would like some direction on how to protect your software related technology with a patent in view of the examples recited in the USPTO Guidance, there are considerations that should help to provide that direction.

Considerations When You Want to Patent Software

To begin, we will presume that your invention is heavily dependent on one or more software components. We will further presume that, as software, it passes the basic §101 test, and that it is a process or a machine — in claim lingo we would say that it contains system, apparatus, and/or method claims. Since it is software-related, in our experience, we believe it is usually safe to then presume that the invention will be deemed an abstract idea, and therefore whether or not you can get a patent for your idea is largely dependent on your ability to show that it is “significantly more” than just the abstract idea.

In order to show your software is “significantly more” than an abstract idea, consider:

  • When preparing code, make sure that your “algorithms/instructions” are not found in a general-purpose computer and are not well understood, routine, or conventional activities.
  • USPTO Guidance stresses that the functions/operations/instructions executed by the processor should not be routine or conventional activities.
  • Develop algorithms that are directed to improving the functionality of the computer itself or improving another technical field.
  • Avoid developing algorithms that are directed to just fundamental economical practices, organization of human activity, historical and prevalent business practices, and basic mathematical relationships, and formulas without significantly more. Such algorithms are directed to historical ways of doing business and business methods and/or to laws of nature which are not novel and are obvious or not unique.
  • USPTO Guidance also stresses that inventions rooted in computer technology/networks can be allowable if the technology is directed to overcoming a problem specifically arising in the realm of computers/networks.

Legal Assistance in Monterey County for Software Patents

As the USPTO continues to provide more concrete guidance for patent practitioners to address Section 101 rejections, the patent attorneys at JRG Attorneys at Law will continue to keep abreast of the latest additions and/or changes to this complex and evolving area of the law. Moreover, the Monterey County patent attorneys and intellectual property lawyers at JRG Attorneys at Law have significant experience in the preparation and filing of software patents and related technologies. If you need assistance with a software patent, Internet technology, or computer related technology, send an email to Attorney Nelson Rivera and Attorney Rudolph Darken at the email addresses and, respectively.

For other legal inquiries for our law firm, you can call (831) 228-5619 or fill out an online contact form today.