An invention consists of a system and method. The system component comprises an electronic measurement system, which is software configurable \ programmable. I would like to understand which of the two labels the invention will be classified.


As I understand the USPTO patent landscape regarding software, this usually refers to products that are downloadable such as MS-Office: they lack physical embodiment and they are difficult to patent \ maintain due to the challenge of being merely an implementation of an abstract idea.


In contrast, there is software that is associated with hardware that has been granted patents.


The invention's best embodiment of electronic hardware (computer) is not 'invented' in the sense that all parts can be purchased from a vendor. The inventive step (design) is the arrangement / deployment of the measurement devices to produce high-fidelity measurements for the invention's methods.


The Mayo/Alice Framework's Step 1 poses the question: Which of the four categories labels the claim: a process, machine, article of manufacture, or composition of matter?

  1. Based on the limited information, does the invention fall into Label 1 or 2?
  2. What strategies, wording, etc. can be engaged to tip the scales in favor of Label 2?

  3. If the patent claims an electronic measurement system and describes its functionality (inputs / algorithm / outputs), is there any benefit to claiming the software? (this assumes category 2)

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  • Regarding your edit, the question "Is the invention a process, machine, article of manufacture, or composition of matter?" does not ask "Which of these four things is the invention?", but rather asks "Is the invention any of these four things?" Only a "process, machine, article of manufacture, or composition of matter" is eligible to be patented, and so this is the first question that must be asked when establishing subject matter eligibility. May 22, 2018 at 20:34

1 Answer 1


The patentability issues you appear to be concerned about (specifically, those relating to subject matter eligibility under 35 USC 101) are not based on a distinction between labeling claims as "software" or "machinery/hardware". Rather, the question of subject matter eligibility will be decided based on a two-part test (originating from the Alice decision, and since refined by other court decisions and USPTO guidance), which asks:

  1. Is the claim directed toward an "abstract idea"; and
  2. if so, does the claim include elements that amount to "significantly more" than the abstract idea?

Determining the answers to these questions can be difficult, and the decisions made by the USPTO (and the courts) are often conflicting and may appear arbitrary at times.

That said, if the invention relies on "the arrangement / deployment of the measurement devices to produce high-fidelity measurements", a claim that includes that arrangement will have a higher likelihood of being patentable than one that does not, because tying the method to a specific (non-generic) structure is a common way of including elements that are "significantly more" than the abstract idea.

Regarding the third question, it is often preferable to claim the steps taken by the software as a method (e.g., tied to the enabling structure, such as the "electronic measurement system"). Although functional descriptions in system claims are frequently employed, they may not be afforded any patentable weight (that is, any system capable of implementing the functionality may count as prior art, whether or not that system actually implements it). Further, such functional descriptions may lead to undesired limitations of the claims under arguments analogous to those of Williamson v. Citrix.

Also, please note that there is no requirement for an embodiment (let alone the best embodiment) to be available for purchase from an vendor in order for the invention to be "invented". Rather, the invention must have been "reduced to practice", which means either that it has actually been implemented in some manner, or that the inventor is capable of describing it in a manner that would enable a person of ordinary skill in the art to implement it. Essentially, if you can describe it in sufficient detail to enable someone else to make it, then it qualifies as an invention.

  • Q3 was posed because I am weighing the pros and cons of claiming the software. Thanks for the guidance / insight.
    – gatorback
    May 22, 2018 at 21:02

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