J. Matthew Miller, III (Matt Miller) is a registered U.S. patent attorney and Special Counsel at Kean Miller in New Orleans, Louisiana. His patent prosecution experience includes software-related inventions. Before becoming an attorney, Matt worked as a professional software engineer. He earned his B.A. at Duke University, with majors in Computer Science and Psychology.
Matt’s technical experience includes databases, web applications, Linux systems, and software tools. That background helps him work with inventors and developers on software architecture, algorithms, computer systems, and implementation details, connecting the technology they have developed to the application describing it and the patent claims seeking to protect it.
Understanding what the software actually does
A product description explains what software does for a customer. A patent application also needs to explain the invention behind that result. A useful technical discussion may involve how components communicate, where processing occurs, how data is represented, or which steps in an algorithm change the way the system operates.
Practical engineering experience helps an attorney ask questions that go beyond a feature list:
- What technical problem does the invention address, and how did earlier approaches handle it?
- Which architecture, data structures, or processing steps produce the asserted improvement?
- Which implementation details are essential, and which could be changed while preserving the approach?
- How do the components interact, including across devices, servers, or services?
Working through these questions can help distinguish the invention from the surrounding product and identify details that belong in the application. It also gives the inventor an opportunity to correct assumptions before those assumptions become part of the patent disclosure.
Software patent eligibility under 35 U.S.C. § 101
For a developer-focused explanation of eligibility, technical disclosure, and preparing for counsel, read Can Software Be Patented? A Software Patent Attorney Explains.
35 U.S.C. § 101 addresses patent-eligible subject matter. Software-related claims can raise questions about the judicial exception for abstract ideas. Under the Alice/Mayo framework, the analysis considers whether a claim is directed to an exception and, if so, whether its additional elements, individually or in combination, supply an inventive concept.
The USPTO’s examination guidance includes considering whether a claim integrates an exception into a practical application. A claimed improvement to computer functionality or another technology can matter; simply asking a generic computer to perform an abstract task is not enough. Careful drafting should explain the actual improvement and reflect it in the claims, rather than rely on technical labels.
Eligibility depends on the particular claims and disclosure. It is also distinct from novelty, nonobviousness, and the disclosure requirements. Technical detail helps make the invention understandable, but it does not guarantee patent eligibility or issuance.
Drafting the description and claims together
The specification and drawings should explain how the invention works, with terminology the inventors can verify. Depending on the invention, that may call for architecture diagrams, process flows, data structures, pseudocode, or examples of alternative implementations. A statement that a system achieves a desired result may leave unanswered how it achieves that result.
The written-description and enablement requirements of 35 U.S.C. § 112(a) make this more than a matter of style. The application must adequately describe the claimed invention and enable a person skilled in the field to make and use it without undue experimentation.
Claim drafting then requires decisions about which technical features define the protection sought. Matt’s development background helps him discuss whether a feature is part of the inventive approach or one implementation choice. Describing supported alternatives can preserve room for different claim formulations during prosecution. The objective is to connect the requested scope to the technology actually disclosed, while considering prior art and the requirements of patent law.
Experience as both a patent attorney and an inventor
Matt is personally a named co-inventor on three issued U.S. patents involving video surveillance and image processing. Each is titled Video surveillance system: U.S. Patent No. 7,859,564, U.S. Patent No. 7,956,889, and U.S. Patent No. 8,605,155. These are his inventor credentials, separate from the patent applications he has prosecuted for clients.
Software-related patent matters handled as counsel
Matt’s representative patent matters include:
- Data mining software: prepared and prosecuted a utility patent application for a system, method, and computer program product for data mining applications, obtaining U.S. Patent No. 8,725,663.
- Wide-area network resource management: obtained utility patent protection for a system and architecture for robust management of resources in a wide-area network, U.S. Patent No. 8,572,290.
These two examples describe Matt’s work as an attorney, rather than inventions on which he is named as an inventor. Each matter depends on its facts and circumstances; past results do not guarantee a similar outcome.
His practice includes patent application preparation and prosecution, patent portfolio strategy, patent litigation, and proceedings before the Patent Trial and Appeal Board (PTAB). Portfolio planning connects individual applications to the business’s technology and objectives. During prosecution, understanding the implementation also supports discussions about cited prior art, examiner objections, and the technical consequences of proposed claim amendments.
Read more about Matt’s engineering and legal background, explore his broader patent practice, or visit his Kean Miller biography for current professional information.
Discuss a potential software patent engagement
To discuss software patent counsel in New Orleans, contact Matt at Kean Miller about your project and a potential engagement. Initial contact can focus on the general nature of the work and your goals. The engagement notice below applies before sharing confidential technical information.