By: Ashley Sloat, Ph.D., President of Aurora Consulting LLC
The Manual of Patent Examining Procedures states: “As a general rule, where software constitutes part of a best mode of carrying out an invention, description of such a best mode is satisfied by a disclosure of the functions of the software. This is because, normally, writing code for such software is within the skill of the art, not requiring undue experimentation, once its functions have been disclosed.... Thus, flow charts or source code listings are not a requirement for adequately disclosing the functions of software.”
However, it is becoming apparent that this no longer applies. Courts no longer want to allow generic computer components or functional software language. Courts want the specifics of exactly how the software will carry out the functions. As recited in the nonprecedential opinion in Clarilogic v. FormFree Holdings, “To be sure, claiming an algorithm does not alone render subject matter patent eligible.”
Consider alternative drafting strategies, like including pseudocode, specifically indicating which components will execute which steps, how a component executes a particular step, how components work together, etc. Remember, many judges are not subject matter experts so even though it may seem obvious to you, it may not seem obvious to a judge deciding your patent’s fate - so include the details.
However, it is becoming apparent that this no longer applies. Courts no longer want to allow generic computer components or functional software language. Courts want the specifics of exactly how the software will carry out the functions. As recited in the nonprecedential opinion in Clarilogic v. FormFree Holdings, “To be sure, claiming an algorithm does not alone render subject matter patent eligible.”
Consider alternative drafting strategies, like including pseudocode, specifically indicating which components will execute which steps, how a component executes a particular step, how components work together, etc. Remember, many judges are not subject matter experts so even though it may seem obvious to you, it may not seem obvious to a judge deciding your patent’s fate - so include the details.
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