Patenting Business Method Based Software/ Mobile Apps

As I describe in my previous post titled, How to patent software in the U.S. (2019), a business method software patent is any invention that performs a business activity through software (e.g., taxi hailing apps, financial transactions based apps, dating apps, etc.). However, the USPTO and courts do not like when an attempt is made to monopolize a business activity simply because it is implemented in software. Therefore, software can be patented as long as the patent application is not crafted to create an industry wide monopoly. This requires strategic planning.

Photo by Thought Catalog on Unsplash

A Hypothetical

The best way to explain what is needed to patent a mobile app is to use an example. Let’s presume that you come up with a ride sharing app which can perform the following:

The mobile app can match ride sharing users all heading to the same location. It does the following:

  1. It identifies each member of the social group and their initial location. Thereafter, it can estimate that the members of the social group are attempting to meet at a particular destination location.
  2. The mobile app then generates a proposed transportation route for a set of users.
  3. A first member is identified (from where the trip is to begin) and once the first member accepts the route, a notification is sent to the second member from the set of users informing him/her that the route has been initiated.
  4. If the second member accepts the route, the driver receives a notification to initiate a second stop, and a notification is sent to a third user, and so on.

Failure to provide technical information will result in the examiner considering the invention as an abstract idea.

Why?

The examiner would most likely state that the idea can be implemented using conventional methods, like using a map, pen/paper, and communicating the order in which the members would be picked up, including the anticipated time of pick up. In other words, the invention can be implemented using pre-computer era techniques and simply stating that the idea is implemented on a computer does not make it patentable.

How To Patent A Mobile Based Invention

Now to patent the above idea, you will need to provide how the computer implements the invention. So, you’ll need to explain how the computer identifies each member of the social group? How the computer generates the proposed transportation route — what is the logic implemented? How the computer identifies the first member, second member, etc.

Anyone well versed in computer science would agree that the above scenario seems to be an NP-hard problem. It is!

So, if you used any of the known algorithms to solve an NP-hard problem, describing the techniques used would result in a particular implementation on how the computer performs your invention. For example, each member is considered as a node of a tree that needs to be constructed. Since the goal is to find the nearest nodes of the tree, to find a value x that maximizes or minimizes the value of a real-valued objective function f(x) among some set S candidate solutions (the feasible region) with the goal to find the minimum of g(x) = −f(x).

Of course there’s more to it, but I believe you get the idea. Be specific on how the computer performs the stated activities.

Conclusion

To patent mobile app based solutions of real-world problems, you need to have an understanding of how a computer performs the suggested tasks. If you do not have the basic understanding of how a computer solves the problem, you only have an idea in abstract.

A side note

The above also demonstrates why an attorney with knowledge in computer science is needed to patent software/ mobile apps. While anyone can understand flowcharts and logically connect the dots, most software patent applications get rejected because they describe a simplified/ generic version of the logic being implemented. Since most inventors rely on an attorney’s guidance and knowledge on how to describe the invention, the patent application can only be as ‘solid’ as the technical knowledge of the attorney.

In my opinion, if your attorney does not understand the underlying concepts of how a computer performs the activities described in an invention, he or she is bound to set you up for failure.

Originally published at https://www.clfip.com on October 15, 2019.

Patent & Defamation Attorney https://www.clfip.com

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