The Importance of Describing an "Improvement" for a Software or Computer-implemented Inventions
Typically, the United States Patent and Trademark Office (USPTO) scrutinizes software and computer-related inventions for "patent subject matter eligibility" under 35 U.S. Code § 101 ("Inventions patentable"). Basically, this means that the USPTO will consider whether a software-related invention directs to a patentable invention or to a mere "abstract idea" (which cannot be patented). See Alice Corp. v. CLS Bank International.
A best practice for overcoming such scrutiny includes describing, in the patent specification, how a software-related invention "improves the functioning of a computer or improves another technology or technical field." Manual of Patent Examination Procedure (MPEP) 2106.04(d)(1).
Fortunately, because software typically executes on some type of underlying computing device (e.g., such as a smartphone, a laptop, a server, a cloud platform, etc.), then an inventor can typically describe how a given software-related invention provides one or more improvements to the underlying computing device.
Examples of "improvements" include describing:
- Increasing the speed or efficiency of the underlying computing device
- Reducing the processing requirement or memory usage of the underlying computing device
- Increased security
- Improved computer network communication and/or operation
- Generally, describing a specific improvement over the prior art (existing technology)
Describing such improvement(s) (or not) can mean the difference between faster issuance of a software-related patent (at less cost) on the one hand and slower prosecution of a patent application (at greater cost)—or possible abandonment of a patent application altogether—on the other hand.
As a registered patent attorney with a background in computer science and engineering, I routinely handle various software-related and computer-related patents, and I have personally discussed software-related "improvements" with U.S. patent Examiners at the USPTO. Examiners specifically request for me to identify where in the patent specification an improvement is described. Hence, having a bright-line "improvement" statement in a patent specification can greatly increase the chances of successfully getting a software-related patent.
How to Demonstrate an "Improvement": the Three-Step Formula
A patent applicant may demonstrate an "improvement" of a software-related invention by following a three-step formula, as described in multiple decisions by the Federal Circuit (see example chart below), and, as summarized by the USPTO in its Manual of Patent Examination Procedure (MPEP). These three steps are described below.
1. Describe the Improvement in the Patent Specification
First, provide sufficient details in the patent specification such that "a person of ordinary skill in the art" would recognize the claimed invention as providing an improvement. See MPEP 2106.05(a). For a software-related invention, a "person of ordinary skill in the art" could be (and typically is), for example, a person with a computer science degree, computer engineering degree, and/or several years of software programming/developing experience. Hence, the first step of the three-step formula includes technically describing to such a person how the software provides an improvement to the underlying computing device.
The MPEP provides that "[t]he specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art.
2. Distinguish the improvement from the prior art
Second, and as part of the first step, describe how the improvement differs from, and overcomes, the "prior art," that is existing technology.
For example, "an indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art." MPEP 2106.05(a).
3. Recite the improvement in the patent claims
Finally, ensure that the patent's claims recite, or at least reflect, the improvement. That is, the claims "must include the components or steps of the invention that provide the improvement described in the specification. However, the claim itself does not need to explicitly recite the improvement described in the specification (e.g., 'thereby increasing the bandwidth of the channel')." MPEP 2106.05(a).
Example Court Cases finding Patents that included an "Improvement"
Courts routinely find patents eligible where an "improvement" is found. Courts will analyze whether an improvement is found under the rubric of the U.S. Supreme Court's Alice test. The Alice test includes two steps.
Under Alice test, Step 1, a court will ask whether a software-invention directs to "an abstract idea." Generally, an "abstract idea" is found when a patent claim recites nothing more than a generic computer component (e.g., "a processor") and a desired end-result. If an "abstract idea" is found then analysis moves on to step 2. If no abstract idea is found, then the patent claim under review is deemed patentable.
Under Alice test, Step 2, if an "abstract idea" is found, the court will then determine whether the claim as a whole includes additional limitations amounting to "significantly more" than the abstract idea (also known as the "inventive concept"). Usually, a claim possesses an inventive concept when it recites elements that are other than well-understood, routine, and conventional computer or software-related functions.
For both steps, as exemplified below, courts have found recitation of an "improvement" by a software-related invention (as described for the three-step formula above) satisfies one or both steps of the Supreme Court's Alice test. As the USPTO puts it:
While improvements were evaluated in Alice Corp. as relevant to the search for an inventive concept [Alice test, step 2], several decisions of the Federal Circuit have also evaluated this consideration when determining whether a claim was directed to an abstract idea [Alice test, step 1].
Importantly, such improvements can be improvements to existing technology (e.g., existing computer technology such as an improvement to an existing processor, memory, etc.). As the USPTO puts it:
the claimed invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity.
A table follows summarizing court cases finding patents eligible based on an "improvement" to computers and related technology. With respect to the below table, Alice test, Step 1 refers to when the court recognized an "improvement" such that patent claims were found not directed to an "abstract idea." Alice test, Step 2 refers to when the court recognized an "improvement" such that patent claims were found to possess an "inventive concept."
| Court Case | Description of the
"Improvement" (as recognized by the court in the patent claims and specification) |
The Court recognized the Improvement under ... | |
| (Alice test, Step 1) | (Alice test, Step 2) | ||
| Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) | A self-referential table for a computer database improved underlying computer capabilities, including "faster searching" and "more effective storage" of data, and also "more flexibility in configuring the database." | Yes | N/A |
| McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) | Automatic lip synchronization and facial expression animation for creating animated movies and movie characters directed to an improvement in computer-related technology. | Yes | N/A |
| Visual Memory LLUnited States Court of Appeals for the Federal CircuitC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017) | An enhanced computer memory system directed to programmable operational characteristics that are configurable based on the type of processor, which can be used with different types of processors without a tradeoff in processor performance, provided an improvement in computer capabilities, i.e., "the use of programmable operational characteristics ... configurable based on the type of processor." | Yes | N/A |
| Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018) | Behavior-based virus scanning software was found to be an improvement in computer technology. Specifically, the virus scanning software-generated security profile that identified both hostile and potentially hostile operations (and could protect against both previously unknown viruses and "obfuscated code") provided an improvement over traditional virus scanning. | Yes | N/A |
| SRI Int'l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295 (Fed. Cir. 2019) | Detecting suspicious activity by using network monitors and analyzing network packets was found to be an improvement in computer network security and related technology | Yes | N/A |
| Core Wireless Licensing S.A.R.L., v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018) | An improved user interface for mobile electronic devices (e.g., mobile phones) that displays an application summary of unlaunched applications, where the particular data in the summary is selectable by a user to launch the respective application. "The improved interfaces allow a user to more quicklyaccess desired data stored in, and functions of applications included in, the electronic devices." | Yes | N/A |
| Ancora Tech., Inc. v. HTC America, Inc., 908 F.3d 1343 (Fed. Cir. 2018) | A specific method of restricting software operation within a license provides an improvement in computer security. Specifically, the patent described "[u]sing BIOS memory, rather than other memory in the computer, improves computer security ... because successfully hacking BIOS memory ... is much harder than hacking the memory used by the prior art to store license-verification information. | Yes | Yes |
| DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) | Generation of a web-page within a web-page for an e-commerce website included a modification of conventional Internet hyperlink protocols to dynamically produce a dual-source hybrid webpage. Such improvement amounted to an "inventive concept" because the patent claims recited a "specific way to automate the creation of a composite web page by an 'outsource provider' that incorporates elements from multiple sources in order to solve a problem faced by websites on the Internet." According to the court the claims did not merely "recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." | No | Yes |
| BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) | The improvement comprised an inventive distribution of functionality within a network to filter Internet content. Specifically, the improvement involved "the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user. This design gives the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on an [Internet Server Provider] (ISP) server." | No | Yes |
| Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) | A distributed network architecture operating in an unconventional fashion provided to reduce network congestion while generating networking accounting data records provided an improvement over conventional technologies. In particular, as described by the specification, "the distributed data gathering, filtering and enhancement performed in the system 100 enables load distribution. Granular data can reside in the peripheries of the system 100, close to the information sources. This helps ... reduce congestion in network bottlenecks [and] still allows the data to be accessible from a central location." The specification described that, in previous systems, "all the network information flows to one location, making it very difficult to keep up with the massive record flows from the network devices and requiring huge databases"; and how data gatherers "act as a distributed filtering and aggregation system and how this improves scalability and efficiency of the system by reducing the volume of data sent to the (central event manager) CEM." | No | Yes |
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
