Applying the USPTO Guidance on Patent Eligibility of SoftwareDecember 11, 2015

                The Supreme Court’s June 25, 2014 decision in Alice Corp. Pty. Ltd. v. CLS Bank International, et al., was anticipated as being the case to decide once and for all whether software is patentable. Many were worried the decision would cause the demise of software patents while others hoped it would secure the future of software patentability. Unfortunately, the decision has only resulted in continued confusion as to the standards for subject matter eligibility for computer related patents. It’s been one year since the United States Patent and Trademark Office issued its first “Interim Guidance on Patent Subject Matter Eligibility.” However, patent practitioners and patent examiners alike are still confounded on the standards of patentability for software applications under § 101.

                The Supreme Court made it clear in Alice that the two-part test laid out inMayo Collaborative Serv. v. Prometheus Labs., Inc. remains the test to be used to analyze all claims directed to laws of nature, natural phenomena, and abstract ideas to determine subject matter eligibility under 35 U.S.C. § 101. This framework was outlined in the2014 Interim Guidance on Patent Subject Matter Eligibility issued December 16, 2014 by the United States Patent & Trademark Office (flow chart reproduced below).

                Among other things, the Interim Guidance provided new form rejection paragraphs for examiners. For example, many rejections under § 101 issued for computer-related patent applications simply state “the claimed invention is directed to a judicial exception without significantly more.” The ambiguity and vague nature of these form paragraphs simply add to confusion as to software patent eligibility. While the Examiner may go on to say that the elements of the claims would amount to no more than a generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities, there is generally little other explanation for why the claimed invention was found to be subject matter ineligible. Many practitioners also find that these form rejections fail to satisfy the requirement set forth in MPEP 2106(II) for examiners to bear the initial burden of presenting a prima facie case of unpatentability.

                Abstract idea Examples were later released in January 27, 2015. Four examples illustrated hypothetical claims directed to software inventions that are patent eligible and four example illustrated claims that were ineligible. The majority of the examples are closely based on actual decisions by the Federal Circuit Court of Appeals. These provided example analyses of the claims based on the Mayo framework. Again, these examples miss the mark on providing guidance to patent practitioners because the examples were too closely tied to specific claim sets in other cases.

                Later, in response to comments received about the December 2014 guidance, the USPTO issued an Update on Subject Matter Eligibility on July 30, 2015. Seven additional examples were provided, bringing the total number of examples related to subject matter eligibility to 27. Additionally, the Update stressed the importance of examiners considering additional elements in combination for determining whether the claims amounted to more than an abstract idea.

Relating to identifying abstract ideas, examiners were instructed to identify abstract ideas by way of comparison to concepts already found to be abstract by case law precedent. These abstract ideas are categorized as “fundamental economic practices,” “certain methods of organizing human activity,” “An Idea ‘Of Itself,'” and “Mathematical relationships/formulas.” This further enforced the practice of examiners only allowing claims that closely resemble patents in court decisions without providing general guidance for all software patents in general.

The guidance also outlined the requirements of a prima facie case, in response to commenters concerns. However, rather than establishing more rigid standards for meeting this requirement, the USPTO simply stated: “Courts have not identified a situation in which evidence was required to support a finding that the additional elements were well-understood, routine or conventional, but rather treat the issue as a matter appropriate for judicial notice. As such, a rejection should only be made if an examiner relying on his or her expertise in the art can readily conclude in the Step 2B inquiry that the additional elements do not amount to significantly more.” Essentially, it is enough for the examiner to find the additional elements do not amount to significantly more without having to provide concrete evidence of such.

To address the issue of Examiner training on the new case law, the USPTO noted the examiners were trained with new worksheets. In addition to the new examples, an index of eligibility examples was posted, as was a chart of subject matter eligibility court decisions. The July 2015 Update: Interim Eligibility Guidance Quick Reference Sheet includes a convenient chart of the four main categories of concepts that are considered to be abstract ideas with examples.

While these updates from the USPTO have provided additional information to the public, they have failed to provide additional certainty. As the examiners are restricted by rules and internal procedures, they are generally only willing to allow claims directed to inventions that closely resemble those which the courts have found to be patent eligible. Ultimately, patent examiners are just as lost as patent practitioners when it comes to subject matter eligibility of software patent claims. Until the courts, the Patent Trial and Appeal Board, or the Patent Office provide more concrete standards for subject matter eligibility, we’re all in this struggle together.