Artificial intelligence (AI) is a driving force behind advancements in software and computer-implemented innovation, and it raises important considerations with patents. In the world of AI, patents can cover more than just hardware components – they can also encompass new software functionality, computer processes and innovative solutions. Patents play a critical role in protecting the underlying technology that allows AI systems to perform tasks like natural language processing, image recognition and autonomous decision-making.
Securing patents for software, computer-implemented innovation and AI is complex due to the challenges posed by the patent eligibility criteria of Section 101 of the Patent Act. The Supreme Court’s 2014’s Alice Corporation Pty. Ltd. v. CLS Bank International, et al. (Alice) decision introduced a two-step framework to determine patent eligibility. First, the framework evaluates whether the invention is an abstract idea, law of nature or natural phenomenon. Software and computer-implemented innovation, including AI, are generally evaluated as abstract ideas. If an invention is an abstract idea, the second step of Alice requires assessing whether the invention includes an inventive concept beyond the abstract idea itself. This means the invention must present a new and inventive solution to a technical problem rather than a trivial variation on existing technology.
The Alice decision clarified that abstract ideas, e.g., algorithms or software, operating on a generic computer could not be patented. This is intended to prevent overly broad concepts from being patented and to encourage innovation beyond basic ideas. As a result, many instances of computer-implemented innovation have been considered abstract ideas that lack the inventive concept required by Alice. The Alice decision raised the bar for patent eligibility, making it more challenging to obtain patents for software and computer-implemented innovation, including those incorporating AI.
To navigate these challenges successfully, it is crucial to carefully consider the technical aspects and practical applications of computer-implemented innovation when preparing patent claims. For patent applications covering software, computer-implemented innovation and AI, detailed claim language should be used to describe how the software or computer-implemented innovation solves specific technological problems. This can include explaining how the invention operates at the level of a computer processor. Claim language should also highlight the practical applications and tangible benefits provided by the invention while emphasizing specific technical aspects and innovative features that enable it to function effectively in a computer system. Moreover, it can be beneficial to demonstrate how the invention improves on an existing technology or leverages the capabilities of a computer processor to solve complex problems, enhance performance or provide unique functionalities. This detail is used to describe how a novel process or interaction occurs within a computer system and achieves practical and tangible results.
In summary, when seeking patent protection for software and computer-implemented innovation, including AI, it is crucial to strategically navigate the requirements of Section 101 in the Alice framework. The chances of obtaining a patent increase significantly when the focus is on the technical aspects, practical applications and inventive concepts of software and computer-implemented innovation.
Meet the Authors:
David Fitzgibbon concentrates his practice on intellectual property matters, with a focus on chemical and mechanical arts. He is experienced in drafting and procuring patents, counseling clients regarding the scope and significance of their and others’ patent and IP rights, and negotiating technology-related agreements on behalf of clients.
Philip Foret works closely with clients to develop strategies aligned with their business goals across the full range of intellectual property matters, including IP counseling and opinions, freedom-to-operate studies, due diligence, worldwide portfolio development, trademark clearance and dispute resolution and copyrights.