A New Year’s Gift: New Guidance on Software Patents by the USPTO
On January 4th, the United States Patent and Trademark Office (USPTO) issued new guidance for its patent examiners on how to evaluate patent claims to determine if they are eligible for patent protection under 35 U.S.C. § 101.[i] Since the Supreme Court’s decision in Alice v. CLS Bank[ii] in 2014, Section 101 has been a significant obstacle for those seeking patent protection of their software-related inventions. With this new guidance, the USPTO appears to be signaling a shift towards a more permissive approach to software-related inventions.
Under the prior rules of practice at the USPTO[iii] many patent examiners tended to interpret the case law and the rules strictly against patent eligibility for claims for software inventions, determining them to be ineligible for including abstract ideas. Since software claims almost always, arguably, contain at least one abstract idea, certain patent examiners freely issued rejections against software claims, creating a major headache for practitioners and applicants alike. The new guidance appears to be providing much needed relief. It emphasizes judicial precedent favoring eligibility while downplaying cases that found claims ineligible.
One change made in the new Guidelines is to clarify what constitutes an ineligible abstract idea. Abstract ideas are grouped into (1) mathematical concepts, (2) certain methods of organizing human activity, and (3) mental processes. If the claim does not recite any of the three exceptions above, examiners are directed to find the claim to be eligible for patentability.[iv]
If the claim is found to recite any of the three categories above, the new Guidance requires the examiners to analyze it further to determine if the claim as a whole is directed to the ineligible subject matter. If a claim recites an abstract idea, but it is “integrated into a practical application of that exception,” the claim is not directed to ineligible subject matter. For example, if a claim uses a mathematical formula to improve the functioning of a computer or of other technology, the claim as a whole is not directed to an abstract idea and is eligible for patent protection. However, even if the claim is found to be directed to an abstract idea, the claim is analyzed yet again to determine if “something more” than the abstract idea itself is claimed that is novel and unconventional. If so, the claim is eligible for patent protection.
The USPTO’s new Guidance is clearly structured to move patent examiners towards looking for eligible subject matter. As such, it represents a long-awaited step forward for patent protection of software inventions. Nevertheless, how quickly patent examiners adapt to the new Guidance remains to be seen. Section 101 is still likely to pose an obstacle for obtaining software patent protection, but patent applicants and attorneys now have a valuable tool for overcoming that obstacle.
[i] 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed Reg. 50 (January 7, 2019), available at https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf
[ii] Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014).
[iii] Affected sections of the Manual of Patent Examining Procedure (MPEP) include §§ 2103, 2104, 2105, 2106, and 2106.03-2106.07(c) (except 2106.04(II), which is now superseded)).
[iv] This article focuses on abstract ideas, which are most often implicated by software claims. It should be noted that the USPTO’s Guidance has broader applicability. Examiners are instructed to perform a similar calculus in evaluating other ineligible subject matter as well, such as laws of nature and natural phenomena.