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Computer Implemented Inventions Patent Law

Restricting Patent Scope: The Debate on Limiting Computer Implemented Inventions in Patent Law

Lindokuhle Mkhize

Lindokuhle Mkhize

15 December 20233 min read

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limiting computer-implemented inventions in patent law

In recent years, there has been an increasing debate about the patentability of computer-implemented inventions. The U.S. Supreme Court's Alice decision and proposed legislation such as the Patent Eligibility Restoration Act (PERA) aim to limit the patentability of certain types of inventions. 

While these measures have their supporters who believe they protect against overly broad patents, they also face criticism for potentially stifling innovation. This article will delve into the pros and cons of limiting computer-implemented inventions in patent law.

Challenges in patenting

Computer-implemented inventions in patent law often face opposition in terms of their inventive steps and sufficiency. Thorough technical demonstration is crucial for their eligibility to be patented.

Identifying the technical issue that the invention addresses is key. Complexity arises when non-technical elements are involved or when the solution lacks impact on technical processes.

Prior art

Prior art refers to any material, including previous patents or publications, that demonstrates the public accessibility of a claimed invention before the filing of a patent application.

A comprehensive search should be conducted to identify relevant prior art. This involves searching existing patents, scholarly articles, websites, and other resources. Properly referring to and distinguishing the novel aspects from pre-existing knowledge is vital in addressing objections related to prior art.

Inventive step

Establishing an inventive step for computer-implemented inventions can be challenging. The European Patent Office follows a problem and solution methodology to determine this criterion. This involves identifying an objective technical issue solved by distinct features from the closest prior art document.

When assessing inventiveness, it is important not only to consider computer implementations but also to evaluate if there are any claim elements with technical character. For example, incorporating enhanced model architecture in AI development may pose prosecution challenges.


Sufficiency is crucial when submitting a patent application. The description should include enough detail for someone with technical knowledge to replicate the invention successfully.

In fields like artificial intelligence (AI) and machine learning, it becomes even more important to clearly specify the training data used. The application should indicate the process of obtaining this data and include criteria for determining what qualifies as "good" training information.

Patentable vs non-patentable

The borderline between patentable and non-patentable subject matter can sometimes appear blurry, especially for computer-implemented inventions and their claimed components. The US Patent and Trademark Office (USPTO) evaluates the patent eligibility of computer-implemented inventions based on abstract ideas. If an invention is purely a mathematical concept or a mental process without a physical component, it may not qualify for patent protection.

Best practices for patenting computer inventions

Inventors can increase their chances of obtaining robust patent protection for their computer-implemented inventions by using the following guidelines:

  1. Seek experienced legal counsel: Hire a knowledgeable attorney specialized in protecting computer-implemented inventions through patents.
  2. Apply the Mayo/Alice test: The Mayo/Alice test refers to the legal test established in two US Supreme Court rulings, Mayo Collaborative Services v. Prometheus Laboratories (2012) and Alice Corp v. CLS Bank International (2014). This test is used to determine whether an invention or process claims eligible subject matter. Use this test to assess patent eligibility and address any concerns.
  3. Gather comprehensive information: Collect all relevant details about the invention before entering negotiations.
  4. Provide clear specifications: Include a concise overview of the technology, clear operating instructions, examples, and potential improvements in the filing specifications.

Avoiding common pitfalls

When patenting computer-implemented inventions, it's important to be aware of common risks. These include insufficient disclosure, premature information sharing, and incomplete submissions. To mitigate these risks:

  1. Pay attention to wording and legal requirements to ensure clarity in claims and descriptions while meeting novelty and nonobviousness standards.
  2. Consider filing provisional patents as a form of insurance against future issues.
  3. Establish strong relationships with co-inventors before applying for a patent to avoid potential conflicts.
  4. Study European Patent Conventions for additional insights into the patent process.

Computer-implemented inventions have both pros and cons.

While they seek to prevent broad patents and foster competition, and innovation, and discourage patent trolls, critics argue they create uncertainty, hinder software development, and potentially suppress genuine inventions. Striking the right balance between protecting innovative advancements and preventing abuse in the patent system remains a complex challenge for policymakers and the legal system as technology continues to evolve.


Are computer-implemented inventions patentable?

Computer-implemented inventions (CIIs) can be eligible for patent protection in the European Patent Office (EPO) if they provide “a technical solution to a technical problem” and have an inventive step. Though the interpretation of “technical” can differ from country to country, CIIs can typically be patented at the EPO if these criteria are met.

What is one significant problem with patents for inventions implemented in software?

Patents for software can be denied or experience long delays that may not last until the usefulness of such inventions, due to difficulty in confirming both their novelty and non-obviousness.

What are the general challenges of patenting computer-implemented inventions?

When seeking to patent computer-implemented inventions, it is important for there to be technical characteristics in the invention presented, an inventive aspect demonstrated and enough detail provided during the process.

What is prior art and how does it impact patentability?

When assessing patentability, prior art must be considered since it is existing knowledge and evidence that may influence a product’s novelty and non-obviousness. These two aspects are important for an invention to obtain its own individual patent.

What impact have recent federal circuit rulings had on patenting computer-implemented inventions?

Federal Circuit rulings in recent times have had a massive influence on the legalities of patenting computer-implemented inventions, offering guidance when it comes to subject matter eligibility.

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Lindokuhle Mkhize, a skilled creative copywriter and content lead at Trademarkia, brings a wealth of experience in driving innovation and managing teams. With previous success in starting and growing the Innovation and Marketing department at her former creative agency, Lindokuhle boasts expertise in leadership and delivering compelling content. Based in South Africa, Lindokuhle's work focuses on key themes of creativity, effective communication, and strategic marketing.