The USPTO issued a memorandum to patent examiners re. subject matter eligibility relating to software patent claims. In the memorandum, the USPTO outlined two recent Federal Circuit decisions in McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016), BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), and noted that guidance re. Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 2015-1180 (Fed. Cir. Nov. 1, 2016) will be forthcoming. Both McRO and BASCOM decisions provide examples as to when software claims would be found to be eligible under current guidelines.
Yesterday, the USPTO issued the most recent guidelines of patent subject matter eligibility pursuant to 35 U.S.C. 101, i.e. the detemrination of when an invention will be found ineligible for an "abstract idea", "law of nature", or "natural phenomenon". This update follows the two preceding updates each from July 2015, and late 2014 (after the Alice decision).
The Supreme Court in Alice, Mayo, Myriad, and Bilski -- four cases in just four years -- dramatically redefined the issue of subject matter eligibility in patent law. That is, the initial threshold question of whether an invention is eligible for obtaining patent protection in the first place. The broad strokes of these cases left much to be desired, particularly and most recently in Alice, in which the Supreme Court created a vague 2-step analysis in determining when a (software or business method) invention is merely an "abstract idea", and therefore not patent eligible. Understandably, the US PTO has encountered difficulty in applying the Alice analysis following the case, but has strived to offer some additional clarity in its latest July 2015 update to its prior 2014 Interim Guidance on Patent Subject Matter Eligibility.
The USPTO today issued an updated and comprehensive guideline regarding patent subject matter eligibility in view of the recent Supreme Court decisions in Alice Corp, Myriad, and Mayo. This "2014 Interim Guidance on Patent Subject Matter Eligibility" was published today, December 16, 2014.
In the aftermath of the Supreme Court decision in Alice Corp v. CLS Bank, we have been keeping a close eye on Federal Circuit and PTAB decisions for further clarification on the case's more stringent test regarding patent-eligibility under 35 USC 101. In this article we note several post-Alice developments regarding the patent eligibility of software processes that may fall in the category of "abstract ideas".
The Supreme Court has granted a writ of certiorari in the software patent case of Alice Corp. v. CLS Bank International, et al. (Docket No. 13-298), where a divided en banc Federal Circuit could not agree on a standard for assessing patent eligibility for computer-implemented inventions under 35 USC § 101. This case will provide a new test for the most basic provision of U.S. patent laws -- whether an invention is patent eligibile -- a threshold test that must first be met before the further requirements of novelty (§ 102) and non-obviousness (§ 103) are considered.
Four months after the CLS Bank v. Alice opinion, the Federal Circuit continues to struggle with subject matter eligibility of computer-related inventions under § 101 of the U.S. patent laws. In Accenture Global Services, GMBH v. Guidewire Software, Inc. (Fed Cir. 2013), Chief Judge Rader and Judge Lourie continue their disparate dialog that began in CLS Bank Int'l v. Alice Corp, and continued in Ultramercial Inc. v. Hulu LLC. However, contrary to the result in Ultramercial, here the party arguing against eligibility of computer programs won out.
It was, perhaps illy established, that transitory signal claims are per se unpatentable under Section 101 of the U.S. patent laws. This was established by in re Nuijten, a Federal Circuit decision dating back to 2007. Recently, in Ex Parte Mewherter, the USPTO has went a step further to hold that a standard Beauregard claim (a computer program on a computer readable medium) is not patent eligible, simply because it could encompass transitory signals. The case has recently been designated by the Patent Trial and Appeal Board (PTAB) as a precedential decision.
The Federal Circuit's decision in CLS Bank left many guessing as to what might be considered patent eligible subject matter under § 101 of the U.S. patent laws. In a more recent and less known opinion, Ultramercial, Inc. v. Hulu, LLC (Fed. Cir. 2013), a three judge panel attempted to provide some additional guidance in light of the CLS Bank indecision. Of note is that the panel included the authors of the two main opposing opinions in CLS Bank, Chief Judge Rader and Judge Lourie. However, rather than authoring different holdings, the panel agreed that the claims at issue in this case met the requirements of § 101.