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This post discusses what has been working recently in the trenches to present and argue toward subject matter patent eligibility and allowance of software inventions, in view of 35 U.S.C. §101, the associated US Supreme Court decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 2347 (2014), and the consequent guidance published by the USPTO.
Software patent application
The patent claims are like the stars by which you can navigate the sea of prospective rights to your invention. The disclosure of your invention is the vehicle of advancement in your navigation to protect your invention. You will need your technical description and illustration of the hull, sail, oars, or engine to carry your pursuit of patent protection. You can use plain terminology for known components to correspond with the plain understanding to people of ordinary skill in the relevant technical field. For premium technical concepts, you need to spell out and show how you accomplish your invention in special care, focus, granularity, and easily-digestible explanation. Include hardware and software architecture in drawings of layers of abstraction as well as flowcharts of logic decision trees.
Patentable difference from the prior art
You will need claims that identify the technical premium of your invention over the prior art. Protection of your invention needs to rely on a patentable difference between your invention and the prior art.
Help the examiner
Once you have a patentable difference in your claims from the prior art, embedded in the analysis is you have a patent eligible invention to be packaged with sufficient architecture. Thereafter, you need to provide the examiner a solid basis in writing to fit your invention into the software patenting framework. A useful template has been published by the patent office. Present your arguments in a format the examiner can rely on in supporting the granting of a patent on your invention.
Find the fun
Finding a way to work when “Alice” is a “small” hindrance to your prospective patenting, paves the way for “Alice” to bolster your patent as “Alice” stands ten feet tall.
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