So You Have A Phone App That You Want to Patent — Or Subject Matter Patentability

August 23, 2017/Sharon Adams/,

Subject matter patentability defines what types of inventions may receive patent protection, and favors physical objects. Phone apps or software programs are not physical objects. To obtain a patent on a phone app or software there must be more than just the app. It is not sufficient to take a task that has been performed without use of the internet, and then make an app to do the task on the internet. The invention must improve the functioning of the computer or phone, or must show an improvement in another technological field.

Patentable Subject Matter
The right to obtain a patent is created by the U.S. Constitution, and is subject to the limitations found in the Constitution, controlling statutes, and case law. Statutory law enumerates four categories of allowable subject matter for inventions, and case law has explained what these four categories mean. These four are:

  1. Process: an act, or series of steps.
  2. Machine: a concrete thing, consisting of parts, or of certain devices or combinations of devices.
  3. Manufacture: an article produced from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery.
  4. Composition of Matter: all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.

Use of a Physical Phone Or Computer Does Not Qualify as a “Machineâ€
Many have argued that the phone or computer itself is a physical object, and that use of these physical objects means that the phone app should be patentable subject matter. However, courts have added limitations to the four enumerated categories of allowable subject matter. There are specific categories regarding what may *not* be patented, including:

  1. Abstract ideas.
  2. Natural phenomena.
  3. Laws of nature.

These rules reflect the view that the basic tools of science and technology are not patentable. For example, a mathematical formula or software algorithm is considered an abstract idea, and is not patentable. A natural phenomena might be a newly discovered mineral or plant. The mineral or plant would not be patentable because it is naturally occurring. Likewise, Newton could not have patented gravity because it is a law of nature.

An app may be able to do many interesting things. But, the Patent & Trademark Office (“PTOâ€) and/or courts will reduce all the things an app does to a few simple concepts, and will review these concepts looking for the presence of patentable subject matter. If an app simply takes a method or practice that was know in the pre-internet world, and performs the method on the internet, it is NOT patentable subject matter. DDR Holdings, LLC v. Hotels.com et al., 773 F.3d 1245 (Fed. Cir. 2014).

The PTO will look to see if the claims have an inventive concept. An invention is not patentable if it “solves no problems, includes no implementation software, [or] designs no system. The mere statement that the method is performed by computer does not satisfy the test of inventive concept.†In Affinity Labs v Amazon, 838 F. 3d 1266 (2016) the court invalidated a patent claiming a network-based media system with a customized user interface, in which the system delivers streaming content from a network-based resource upon demand to a handheld wireless electronic device having a graphical user interface. The court held that this was simply an abstract concept, and was not patentable.

Similarly, in In re TLI Communications LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016), the court held that including generic physical objects does not remove the invention from being the abstract concept. In this case, the court analyzed a patent on a method for uploading digital images from a cellular telephone to a server, which would then classify and store the images. This patent used physical components including a telephone and a server. However, the court noted that “not every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry†and it pointed out that the specification made clear that the recited physical components “merely provide a generic environment in which to carry out the abstract idea of classifying and storing digital images in an organized manner.â€

Conclusion
A phone app or software invention has significant hurdles to overcome before it qualifies as patentable subject matter. There must be some tangible invention aside from implementing an invention on a phone or computer.

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Sharon Adams