Software patenting is alive and well, in spite of popular opinion. Every year, the USPTO issues thousands of patents covering the software of companies in virtually every technology area. This trend is only expected to continue.

The question, therefore, is not whether a company can patent its software. It is how a company can patent its software. This is where a skillful patent attorney can help. Courts are continually developing the legal standards for patenting software, and strategies from their cases can provide positive outcomes for patent applicants.

The threshold question considering a patent claim covering software is:

Does the claim recite subject matter that is even eligible to be patented in the first place?

If the claim recites only an abstract idea, the claim will be held to recite patent-ineligible subject matter.

The Court of Appeals for the Federal Circuit addressed this issue in Glasswall Solutions Ltd. v. Clearswift Ltd. In this case, certain claims covered patent-ineligible subject matter because they only recited an abstract idea. The court further noted, however, that the invention described in the patent might have been patent-eligible if the claims were written properly.

In the Glasswall Solutions case, the court found that the claims covered nothing more than the concept of filtering of electronic files and data. This concept was considered to be routine and conventional and thus not worthy of a patent.

What the court was really saying here is that the claims are too vague and could have been patent-eligible if written with sufficient specificity. But mere specificity is not enough. The claims in the Glasswall Solutions are not brief. Each independent method claims in question recites at least seven operations.

A patent claim covering a software invention must not only be specific, but must be specific in a certain way. The following comments of the Glasswall Solutions court illustrate this point:

“The claims at issue … do not purport to claim how the invention receives an electronic file, how it determines the file type, how it determines allowable content, how it extracts all the allowable data, how it creates a substitute file, how it parses the content according to predetermined rules into allowable and nonconforming data, or how it determines authorization to receive the nonconforming data.” (Emphasis original)

“the claims do not create a new kind of file or improve the functioning of the computer itself.”

The lesson from the Glasswall Solutions case is therefore clear: When writing a patent claim covering a software invention, make sure the claim recites specific features that improve the way a computer functions or are otherwise not routine and conventional. Such a claim recites more than just an abstract idea and thus provides software patent applicants with the best odds for surviving a patent-eligibility challenge in an informed court.