By: Paul Weidlich, Shareholder, Chambliss Law Firm

During the past couple of years you have probably been told that software patents are dead.  Probably more than once.

That’s because since the Supreme Court’s Alice decision in 2014, the Patent Office has routinely rejected software patent applications on the grounds that they merely claim an “abstract idea” that is not patent-eligible subject matter. Perhaps even more concerning is that since Alice, courts have used the same rationale to invalidate already-granted software patents, almost without exception.

The recent Federal Circuit decision in Enfish, however, is one such exception. More importantly, the Enfish decision provides at least one viable path to obtaining patent protection for software.

The software patent application at issue in Enfish claimed a “self-referential” database with no physical structure at all. Nevertheless, the Enfish court found the claims to be directed to patent-eligible subject matter.

More particularly, the court ruled that the claims were directed to an improvement to computer functionality as opposed to an abstract idea. In this case, the court relied on both the claim language and the written description of the patentee’s specification. The latter describes specific advantages of the claimed self-referential database as compared to conventional databases, e.g., faster search times, smaller memory requirements, and improved flexibility in database configuration. Ultimately, the court concluded that the claimed self-referential database functions differently from conventional databases and represents a technical solution to computer problems.

For those who will be seeking patent protection for their software, here are our three key takeaways from Enfish:

(1) describe all of the advantages your software achieves in as much detail as possible;

(2) specifically describe how your software improves the functionality of the computer in which it operates; and

(3) clearly identify the technical problem your software solves.

…And one more tip – make sure you highlight the following language from the Enfish decision if the USPTO happens to send a rejection for lack of patent-eligible software:

“[w]e do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract…”

I know we will.



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