To-and-fro on patent-eligibility of computer software in the US system Stefano John NAIP Education & Training Group / European Patent Attorney
Since the last article in NAIP Newsletter on the Ultramercial, it looked like it would be difficult to obtain patents for many computer implemented software based inventions as they were going to be not patent eligible under the new interpretation of judicial exemptions of USC35 §101. However the situation has changed in a more positive manner since then.
First, the CAFC issued a new decision DDR Holdings, LLC v. Hotels.com, L.P. (Fed. Cir. 2014) which deemed the DDR patent as patent eligible even though it was based on how the computer-implemented invention interacted with the internet because DDR's claims changed the operation of a generic computer so that new and beneficial features were possible. This seems to be directly contrasting the CAFC’s opinion on the role of the internet in computer implemented inventions as reported in the previous article on Ultramercial.
Since then, on the 15th December 2014, the USPTO finally released its interim guidance on patent eligibility in light of Alice. This is guidance for patent examiners to apply in patent prosecution and is not persuasive on higher courts, yet is important for patent applicants and patent engineers to understand because it allows a fair and open discussion with the USPTO examiner on obtaining a granted US Patent.
The USPTO had already released one interim guidance document earlier this year for patent eligibility in light of previous US Supreme Court decisions on DNA and nature-derived inventions (Mayo and BRCA). This has now changed to take into account the latest decisions. The decision process for examiners is highlighted here below for you in a diagram. It follow the classic 2-step USC35 §101 test. The first step is to see if the invention involves statutory categories; most inventions pass this test. The second step involves the infamous judicial exceptions and it is in this step that many computer implemented inventions may fall foul in light of Alice or Ultramercial. It is this step that has been changed in step 2A and Step 2B.
New step 2A requires that the invention be directed to a judicial exception (“mere abstract ideas” generally being the problem for software). Classic cases of “abstract ideas” are cited at page 74622 of the Federal Reg. Vol. 79, No. 241 and reflect mainly old caselaw on the subject. This step is not to be undervalued because it is different from the more stringent test of the past that required a structural analysis (is there something in the claims that is a judicial exception). It now requires a functional analysis of the claim (what is the purpose of the invention). This seems to be more in tune with the Alice decision, as opposed to the previous practice of just needing to highlight a judicial exception within the claim and automatically claiming the invention is not patent eligible. The notice does not give clear examples of what passes and what does not here.
Even if it does fail Step 2A, there is a catch-all that may still save the patent claim from being defined as not patent eligible: If other elements of the claim, considered both individually and as an ordered combination, are sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself. The notice then gives examples of what is “significantly more” than “abstract ideas” for computer implemented inventions at page 74624 of the Federal Reg Vol. 79, No. 241:
Improvements to another technology or technical field;
Improvements to the functioning of the computer itself;
Effecting a transformation or reduction of a particular article to a different state or thing;
Applying the judicial exception with, or by use of, a particular machine;
Adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application; or
Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment
It is noted that the first 3 listed items here above answer better the question of Step 2A than Step 2B because they reflect the function of the invention more than its structural format. Anyhow, it does not matter whichever way it is presented as it only needs to fit a category listed above to convince the Examiner that the invention is patent eligible. The notice also gives examples of what is not considered as “significantly more” is:
Adding the words ''apply it'' (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer;
Simply appending well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well- understood, routine and conventional activities previously known to the industry;
Adding insignificant extra solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea; or
Generally linking the use of the judicial exception to a particular technological environment or field of use.
Notice how the last item in both lists above is only limited by the presence of the words “meaningful limitations”. Hence most ambiguous situations could still be boiled down to whether the claim contains meaningful limitations or not without the USPTO further defining the extent of the word meaningful!
This seems good news for the applicant as it seems to bring the situation on a fairer footing and allows the applicant many different categories for arguing that the invention is patent eligible.
Some further good news can be seen from the fact that the USPTO were aware of the mounting number of 101 rejections being sent out by examiners. The guidance indicates that the examiner should "identify the exception by referring to where it is recited (i.e., set forth or described) in the claim and explain why it is considered an exception," and "[t]hen, if the claim includes additional elements, identify the elements in the rejection and explain why they do not add significantly more to the exception." This should see a drastic reduction in numbers of rejections simply arguing that the claims only contain abstract ideas or genericities in light of the prior art and therefore are invalid under USC35 §101, because the applicant can then argue that the rejection lack specificity with respect to the analysis of either prong and is facially insufficient.
In conclusion, I would argue that by moving the test on patent eligibility from a structural analysis to a functional analysis, the USPTO seems to have drawn a balanced approach on interpreting the developing caselaw on this area of patent law. It now remembers to be seen if it is so applied by examiners without unintended consequences developing or that the caselaw does not change direction once more.
Author:
Stefano John, European Patent Attorney
Experiences：
European Patent Attorney, Bryers
Trainee European Patent Attorney, Bugnion SpA
Trainee European Patent Attorney, Notabartolo & Gervasi
Internship, EPO
