A big challenge for tech companies is adapting their patent strategies to evolving legal standards. One of the most confusing and unpredictable areas in patent law, especially for computer-implemented inventions, is the standard for what is considered patent-eligible in the U.S.

Some of the biggest inventions in the computer industry right now are in quantum computing. How have these inventions fared under evolving patent eligibility standards? Surprisingly, quite well, under the right circumstances.

As quantum technologies mature, the number of quantum computing patents continues to grow rapidly. However, many quantum computing patent applications face scrutiny, and it’s important to understand how patent examiners apply the law of patent eligibility in this field of technology.

I’ve been working on patent applications for quantum technologies for well over a decade, and my law firm has drafted and prosecuted hundreds of patent filings for quantum technologies. After successfully navigating the U.S. patent eligibility framework for all kinds of inventions, here’s some practical guidance for quantum computing innovators to successfully steer around these thorny issues surrounding patent eligibility.

Why is Patent Eligibility an Issue for Computer Technology Companies?

In 2014, the U.S. Supreme Court issued a decision in a case called Alice v. CLS Bank. The Alice decision was big news because it made obtaining U.S. patent protection for software and computer systems more difficult.

To obtain a patent, an invention needs to meet four criteria. It needs to be:

  • Subject matter eligible;
  • Novel compared to prior art;
  • Not obvious; and
  • Described adequately in the patent application.

The legal system has long established that abstract ideas are not eligible for patents. What the Alice decision did was push many technological innovations into the abstract category. It created a two-part (that’s really a four-step) test for subject matter eligibility.

The USPTO has a handy flowchart to determine subject matter eligibility. It starts with one question that’s pretty easy to answer: “Is the claim [for a patent] to a process, machine, manufacture or composition of matter?”

The second question is trickier: Is the claim directed to an abstract idea?
It’s a tricky question because the Supreme Court did not define what an abstract idea actually is. The USPTO has defined three broad categories of abstract ideas:  mathematical concepts, methods of organizing human activity, and mental processes.

How Does the Two-Part Test in Alice Apply to Quantum Computing Technologies?

Quantum computing encompasses a wide range of research and development, and the Alice test for patent eligibility will not necessarily have the same outcome for every invention in this broad field of technology.

For purposes of patent eligibility, it’s useful to think about a spectrum of quantum computing technologies ranging from the most theoretical to the most physical. You can think of these three bands on the spectrum:

  1. High-level algorithms and theoretical developments.
  2. Control systems and methodologies.
  3. Hardware and components.

Strategies for Patenting Mathematical, Algorithmic, and Theoretical Quantum Innovations

A good example of a mathematical quantum innovation is Shor’s factoring algorithm, which solves integer factorization problems more efficiently than known classical algorithms. The factoring algorithm itself is mathematical and therefore, would likely be considered an abstract idea. Many such algorithms that are agnostic to hardware and software — in other words, not tied to any specific type of quantum hardware or software and could run on any type of quantum computer — are most likely to run into scrutiny as abstract ideas that are not patent eligible.

This doesn’t mean a mathematical innovation cannot be patented; it just means more work needs to go into demonstrating the practical application of the invention. Shor’s factoring algorithm has many practical applications, perhaps most importantly: it could break public-key cryptography systems.

As long as they are not claimed too broadly, many of these types of inventions can have a chance of surviving scrutiny under the current patent eligibility framework. For patent application drafting, consider these three tactics:

  1. Describe specific technological problems that the invention solves. For example, Shor’s factoring algorithm can be used to decipher encrypted messages.
  2. Describe specific hardware that can be used to implement the invention. For instance, explain how Shor’s factoring algorithm would be executed for a specific class of processors (e.g., trapped ions, superconducting circuits, and others).
  3. Draft claims that are directed to a specific application of the invention, as opposed to all possible applications. For instance, an application for Shor’s factoring algorithm could focus on its function in decrypting messages.

These tactics all point to the strategy of describing specifics and practical applications of the invention.

Patent Strategies for Control Systems and Methodologies

The middle range of the spectrum encompasses innovations that relate to controlling quantum computing hardware, but are not hardware themselves. An example would be strongly modulating pulses for quantum control.

These inventions often include a process that’s implemented by software that runs on a classical computer or classical electronics. For that reason, they may run into the same types of scrutiny from the USPTO as any other classical software.

Tactics to strengthen a patent application for these types of innovations include:

  1. Describing how the invention improves the operation of the quantum computer itself. For example, in a patent application, I would describe how strongly modulating pulses allow higher-fidelity control operations within the quantum computer. I would illustrate how this makes the quantum computer more accurate and efficient.
  2. Describing how the invention controls specific hardware of the quantum computer, such as how the control system interacts with qubit hardware. Even if the invention isn’t implemented within the quantum processor, you should explain how it interfaces with it.

The overall strategy to strengthen a patent application for these kinds of inventions involves emphasizing the process of how the innovation modulates or controls the physical components of quantum technology.

Quantum Computing Hardware Inventions Have the Fewest Problems with Subject Matter Eligibility

Patent applications that claim novel quantum computing hardware — physical components of quantum computers — are the least likely to run into problems with subject matter eligibility.

For example, a transmon qubit is a hardware component that was developed to reduce sensitivity to certain types of noise in superconducting quantum processors. Because it’s a physical component of the quantum computer and it solves a technical problem, this type of invention is far less likely to be considered an abstract idea.

To most people (including myself), it’s absurd to think that a physical piece of hardware that’s both novel and innovative could be dismissed by the patent system as a mere abstract idea. But believe it or not, even hardware components are not immune to scrutiny under the Alice framework. For example, a patent on a digital camera was held to be a patent-ineligible abstract idea under Alice. With this in mind, strategic patent drafting is necessary even for hardware inventions.

Here are a few patent drafting tactics that can be used for quantum computing hardware inventions:

  1. Describe specific technological problems that the invention solves. For example, transmon qubits reduce sensitivity to charge noise.
  2. Describe the specific elements that are different from conventional hardware, and explain how those features provide technical improvements or advantages. For example, a transmon qubit typically includes an arrangement of two Josephson junctions with a large shunting capacitance.
  3. Draft claims that explicitly recite the novel hardware components (or the novel arrangement of hardware components), as opposed to reciting only novel functionality at a high level.

When the Supreme Court first issued the Alice decision in 2014, quantum computing was entering a new phase in its development as it shifted out of government labs amid a wave of private investment. While Alice created uncertainties and challenges for patenting software, well-crafted patent applications for quantum computing technologies have an excellent shot at passing the test for patent eligibility, especially when drafted strategically.

Michael K. Henry, Ph.D.

Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.