Beyond the looking glass: Patenting optical inventions in the world of Alice

In the early days of optics, optical inventions were instruments designed to view an object with the human eye. Whether such instruments could be patented in the US turned mainly on whether they were novel and nonobvious in the eyes of US patent law. There was never a serious question of whether the instrument constituted patentable subject matter since it clearly qualified as a machine under the patent laws.

Nowadays, the typical optical invention incorporates a digital detector and an electronic processor configured to perform digital processing of an image or optical signal. This digital evolution of optical inventions and the legal evolution of US software patents intersect at a 2014 US Supreme Court case Alice Corp. v. CLS Bank International, 573 US 208, known in patent circles simply as "Alice." Inventors of optical devices should be familiar with the basics of this case in order to avoid patenting pitfalls and optimize their chances of winning intellectual property protection for their work.

Alice involved a portfolio of four software patents directed to computerized, that is, software-based methods of managing the payment of debts through escrow. The validity of these patents was challenged, and the US Supreme Court ruled the patents invalid as being directed to an abstract idea—namely, to the general notion of managing escrow accounts, which had been done previously without computer management.

The Court held that performing abstract ideas on a computer does not transform the abstract idea into one of the available types of patentable subject matter—a machine, a process, an article of manufacture or a composition of matter.

A rephrased version of the Court's test regarding potentially abstract patent claims is as follows:

If a patent claim appears to be directed to an abstract idea, does it include an inventive concept sufficient to transform the abstract idea into patentable subject matter? The Court and subsequent lower courts have ruled that the inventive concept needs to be described using meaningful additional features in the claim beyond those words used to establish the underlying abstract idea.

The risk of Alice being invoked for an optical invention depends on where the additional features reside relative to the detector. For simplicity, I refer to three categories of inventions.

A category one invention, where the additional features reside entirely within the optical system, constitutes an all-hardware based optical instrument like those of yore. Consequently, a properly worded claim to a category one optical device invention should not run afoul of Alice.

A category two invention constitutes a mix of hardware and software. In this case, it is important to tie the upstream hardware additional features to the downstream algorithm software additional features and show how they operate to define a new and improved optical device. Here, it can be worth discussing the shortcomings of prior art optical devices in the patent application and explain how the invention overcomes them.

It can also be helpful to draft the category two claim so that it looks more like a hardware invention than a software invention. This can be done by downplaying the downstream additional features, such as by avoiding the use of equations or algorithm-intensive language and instead use descriptive and functional terms. The Alice risk for a category two invention is medium, but can vary based on the balance of upstream and downstream additional features.

A category three invention resides entirely within the algorithm-based software and so presents the highest Alice risk. A category three claim needs to include sufficient additional features of the digital processing steps to properly demonstrate the inventive concept. Many inventors and attorneys fall short here by thinking category three claims can be drafted in nebulous and overbroad terms. Connecting upstream hardware to downstream algorithm steps can help focus the claim and cast the invention as an apparatus. Eschewing mathematical expressions is useful to avoid a knee-jerk Alice rejection. The description of the invention should include copious algorithm details in case they are needed later during patent examination. That said, the claims of a patent application are what are scrutinized by the US Patent and Trademark Office for patentability, not the description set forth in the specification. Claiming any type of invention too abstractly can elicit an Alice rejection.

Because virtually all modern optical devices employ detectors and algorithm software, there is a risk that Alice may be invoked to declare an optical device invention ineligible subject matter for patenting when at least some of the inventiveness resides in the algorithm software.

Drafting patent claims on an optical device with an appreciation of where the additional features that define the inventive concept reside and how it improves the technology can help avoid an Alice rejection while creating a stronger patent for licensing and enforcement.

Joseph E. Gortych is an intellectual property attorney specializing in optics, photonics, and imaging technologies at Downs Rachlin & Martin PLLC. He is a Member of SPIE, an OSA Fellow, and author of the book Consider a Spherical Patent: IP and Patenting in Technology Business published by CRC press.