May 15, 2016

Comments on the revival of software patents as patent eligible subject matter

A brand new decision by the U.S. Court of Appeals for the Federal Circuit (CAFC) and new USPTO guidelines for examiners disseminated on 4 May (last week) may have breathed new life into arguments that had been receiving resistance from some examiners in response to rejections that the software is not patent eligible under 35 U.S.C. 101.

For example, the guidelines state "Examiners should not go beyond those concepts that are similar to what the courts have identified as abstract ideas." By reciting many steps of our claim as the abstract idea, examiners have gone beyond any abstract idea recognized previously by the courts. Furthermore, some examiners have asked us to cite an example in the previous guidelines similar to ours and we have objected. The new guidelines state "applicants should not be required to model their claims or responses after the examples to attain eligibility." Thus it may be worth referencing those two points and resubmitting our responses for some of these cases.

The CAFC case, Enfish LLC v. Microsoft Corp., case number 15-1244, found database storage methods patent eligible and overturned a district court for interpreting the claims too broadly. "Describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to Section 101 swallow the rule." (Though, arguably, this is what the Alice decision did to the claims in that case.) "The claimed invention was an improvement over existing databases because it increased flexibility, led to faster search times, and required less memory," the CAFC said. Thus the claims are not 'directed to' an abstract idea and the second stage of analysis, whether there is substantially more, is not required. When identifying what is an abstract idea, the CAFC says "both this court and the Supreme Court have found it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases." Doing this, we can usually note that our claims are not directed to "fundamental economic and conventional business practices" as taught in Alice to be abstract ideas, even if implemented on a computer. The CAFC points out "Software can make non-abstract improvements to computer technology "and pass at the first stage of analysis and does not need the second stage to find "substantially more." The CAFC further points out "The 'directed to' inquiry . . . cannot simply ask whether the claims involve a patent-ineligible concept ... Rather . . . whether their character as a whole is directed to excluded subject matter."

This case also stands for the proposition that a physical component need not be recited in a software method claim, stating "that the improvement is not defined by reference to "physical" components does not doom the claims. To hold otherwise risks resurrecting a bright-line machine- or-transformation test . . . or creating a categorical ban on software patents." Interestingly, the CAFC did not refer to software steps as "mental steps" performed on a general purpose computer, which is often argued by examiners when rejecting software patents.