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.
A recent comparative study published in the John Marshal Review of Intellectual Property Law suggests that a more thorough examination is conducted by the USPTO, when compared to the Australian or European Patent Offices. This finding is contrary to the view that the USPTO is generally the more lenient of the international patent offices. In this empirical analysis, 494 patent applications having the exact same claim 1 and being issued in all three patent offices were reviewed for meaningful change, i.e. a substantial narrowing of patent scope based on a citing of a prior art. The resulting finding was that the USPTO narrows claim 1 more often than either the Australian or the European Patent Office. The full study can be found at http://repository.jmls.edu/cgi/viewcontent.cgi?article=1401&context=ripl.
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.
This past Monday the Senate officially confirmed Michelle Lee as the new director of the US PTO. Director Lee is the first woman director of the agency, and previously served as Google's chief patent counsel. Since beginning her tenure at the US PTO, Director Lee has set her primary focus on improving patent quality in the US patent system. In line with this patent quality initiative, the US PTO has set forth six (6) proposals to serve as the focal points for the upcoming Patent Quality Summit on March 25-26, 2015.
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.
A number of patent fee changes will go in effect January 1, 2014. Notably, the issue fees of all applications will decrease dramatically. Small and micro entity fees will now be available for a number of PCT fees. The assignment recordation fee has also been eliminated if filing electronically.