Why Including An "Algorithm" Is Important For Software Patents (Part 2)

• Published date: 10 September 2021
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: Marshall, Gerstein & Borun LLP
• Author: Mr Ryan Phelan

PatentNext Summary: In some instances, software-based patent applications can fail to include a sufficient algorithm describing "how" the software interacts with the underlying hardware of the invention. This can lead to issues in both prosecution and litigation, creating unnecessary expense or invalidation of a related patent. Therefore, as a general rule, software-related patents should include an algorithm. An algorithm provides support for a software-related patent pursuant to 35 U.S.C. ' 112(a), including (1) by providing sufficiency of disclosure for the patent's "written description" and (2) by "enabling" one of ordinary skill in the art (e.g., a computer engineer or computer programmer) to make or use the related software-related invention without undue experimentation. Without such support, a patent claim can be held invalid.

The below article provides additional details. This article forms the second part of a multi-part series. The first part, focusing on indefiniteness pursuant to 35 U.S.C. ' 112(b) and (f), may be found here: Why including an "Algorithm" is Important for Software Patents (Part 1).

In some instances, software-based patent applications can fail to describe "how" the software interacts with the underlying hardware of the invention. This can lead to issues in both prosecution and litigation, creating unnecessary expense.

Overview of Section 112 Requirements

Two requirements for all patent applications are that: (1) the patent claims have a proper "written description" disclosure, and (2) "enablement" support. The written description requirement requires a patent specification to describe the claimed invention in sufficient detail to establish that the applicant had "possession" of the claimed invention as of the application filing date.

The enablement requirement requires a determination of whether the patent specification contains sufficient information regarding the subject matter of the claims so as to "enable" a person skilled in the art to make and use the claimed invention.

Typically, a computer scientist, computer engineer, or skilled computer programmer constitutes a person of skill in the computer and software arts.

The enablement requirement is separate and distinct from the written description requirement, where the written description requirement is intended to "clearly convey the information that a [patent] applicant has invented the subject matter which is claimed" (Manual of Patent Examination Procedure (MPEP) 2163), and the enablement requirement "serves the purpose of ''ensur[ing] that the invention is communicated to the interested public in a meaningful way." MPEP ' 2164.

These requirements come from Section 112(a) of the U.S. Patent law that reads, in relative part:

The specification shall contain a written description of the invention, and of the...