Software patents live and die on two questions most attorneys under-plan for: is the claim eligible under 35 U.S.C. §101, and is it enabled and definite under §112. Get those wrong at drafting and no amount of prosecution saves the claim. This is where an engineering background actually pays off.
Surviving §101 (the Alice problem)
Since Alice v. CLS Bank, examiners reject software claims as "abstract ideas" with routine ease. The answer isn't to hide the software – it's to anchor the claim in a specific technical improvement: a better data structure, a reduction in memory or bandwidth, a new way of coordinating hardware, a concrete result the prior art couldn't achieve. We draft the specification to tell that improvement story from the first paragraph, so the claim has somewhere to stand.
- Claims tied to a concrete technological improvement, not a business outcome
- Specifications that document the technical problem and the measurable gain
- Fallback claim sets and continuations that give you room to maneuver on appeal
Claiming machine learning without giving it away
ML inventions raise enablement and written-description questions courts are still sharpening. Claim the training method, the architecture, the feature engineering, the inference-time optimization – but describe enough that the claim is enabled without publishing your model weights or your secret sauce. Patents and trade secrets are complementary tools; we help you decide what to file and what to keep dark.
AI-assisted inventions and inventorship
Under current USPTO guidance, an AI system cannot be a named inventor – but inventions made with AI assistance are patentable when a natural person made a significant contribution to the claimed conception. Naming inventors wrong is a validity problem later. We work through who contributed what, so the application is defensible from day one.
Typical trigger: "A bigger company just shipped our core feature," or "Our lead investor's technical diligence flagged that we have no patents." Either way, the clock matters – U.S. law gives you a limited window after public disclosure or sale.
What we handle
- Utility patents for software, algorithms, distributed systems, and AI/ML
- Provisional applications sized to a startup budget and runway
- Freedom-to-operate before a launch or a raise
- Office-action responses and appeals on §101 and §112 rejections
- Trade-secret and invention-capture strategy alongside filings