Since Alice, many clients have been asking how difficult it would be to register software patents. My first answer to this questions is: patent prosecution for any type of patent applications is a complex process, which means whether or not the invention in question is an apparatus or a computer-implemented method, it may take just as much time and effort to prosecute.
So the real question becomes, how do you deal with the rejections (they will be rejections under 35 U.S.C. § 101)? I've been sort of compiling a list of software patents that recently registered to learn their successes. It is important to note, I think, that you don't always have to be looking for "pure" software patents to look for good examples. You may find it surprising that some hardware patents include logic that is deemed patentable.
Here are two examples of registered patents: 1) US 9,083,752 entitled Mobile device management as a simplified online software service ('752 patent); and 2) US 8,738,278 entitled Two-wheel, self-balancing vehicle with independently movable foot placement sections ('278 patent). The '752 patent is one that I've prosecuted. The '278 patent is one that Mark Cuban has a part interest in (learned from one of my go-to IP blog, IP Watchdog).
When you receive a 101 rejection, it will read something like this:
Claims ___ are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Or you'll see something like this:
...claimed invention is directed to non-statutory subject matter because the claims as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than the abstract idea.
The first thing that you need to do is make sure that the examiner met his or her burden of rejecting the claims. Here, you have to make sure that the examiner showed that all claim elements do not amount to significantly more than the abstract idea. In other words, you have to explain why the novel features are not abstract.
One way to accomplish this is to explain that the logic/software is tied to a way that an apparatus operates. In the ‘752 patent, claim 1 (method claim) states inter alia, “permitting or disallowing actions when the mobile device is within a specific geographical area.” (This feature was one of the reasons for receiving notice of allowance.) You can see here that the determination of the device’s location controls whether or not certain actions are enabled or disabled. This method, as a result, is not just an abstract idea.
Another way to accomplish this is to point out that it’s actually a hardware that carries out the computer-implemented process in question. In the ‘278 patent, claim 1 (claim for a device) states inter alia, “…control logic that drives the first wheel toward self-balancing…” You can see here that the control logic, e.g., a processor, is the actor. Clearly, this claim is not abstract.
I’ve referred to the USPTO guidelines in the past and they are helpful for sure, but I actually find it easier to understand these examples and other recently registered patents.