Nathan A. Evans

Nathan A. Evans
Of Counsel

Do you know approximately 130 billion apps have been downloaded from the App Store between July 2008 and June 2016 according to Apple? (Source:

However, based on the Supreme Court’s so-called Alice decision in June of 2014, coupled with its treatment by the U.S. Patent & Trademark Office (“USPTO”), the current legal landscape makes it particularly difficult to get a patent on computer software applications (e.g., “apps”).  Abstract ideas implemented on generic computers are not patent eligible unless the embodiment adds “significantly more” to the abstract idea. Specifically, the USPTO created the following two-part test to determine patent eligibility under Alice:

Step 1: Is the claim directed to a process, machine, manufacture, or composition of matter?

Step 2a: Is the claim directed to a law of nature, a natural phenomenon, or an abstract idea (judicially recognized exceptions to patentable subject matter)

If yes, then Step 2b: does the claim recite additional elements that amount to significantly more than the judicial exception?

Alice and this test are being cited by patent examiners to deny patent applications, especially in cases involving software apps. Applicants may appeal rejections of their patent applications to the Patent Trial and Appeal Board (“PTAB”), which rarely overturns rejections. However, there are several means to strengthen your argument to the PTAB that may successfully result in reversal of an Alice-based rejection.

The first way to get a patent rejection reversed is to show that the examiner did not provide enough information supporting its argument that the software application is patent ineligible. If the patent examiner did not provide enough evidence to show that the invention was an abstract idea rather than a process, machine, manufacture, or composition of matter, and/or that the abstract idea does not add “significantly more,” the patent rejection can be overturned.  Another way to have a patent rejection reversed is todemonstrate that the subject of the patent application meets the “machine-or-transformation test.”  While not dispositive, if the subject matter requires a machine/apparatus, or physically transforms the underlying subject matter to a different state or thing, it has a better chance of being found to be patent eligible.  If the claim requires a specific physical object to be executed and the physical object and the idea are inextricably tied, the patent rejection can be reversed.  Similarly, the applicant should include detailed descriptions of the physical structures tied to the function or idea that was the subject of the patent application, because as long as the claim covers, even partially, physical structures that are patent eligible, the rejection can be reversed.

Also, if the subject of the patent application is a method, an applicant can overcome a rejection by demonstrating that a human could not perform the method; for example, that a computer is necessary.  Finally, an applicant can overcome a rejection by showing that the methods, or so-called “algorithms” typically found in computer software patent applications, require input from a physical device.  When the physical object is necessary, the subject becomes patent eligible because it is no longer simply an abstract principle. Emphasizing aspects of the claim that are patentable subject matter may help persuade the PTAB to overturn the rejection.

For additional detail, see this article about protecting “apps” or computer software with patents.