Subject Matter Eligibility of Software related Patents
On May 12, 2016 the USPTO issued a Memorandum to the Patent Examining Corps on patent eligibility in view of recent court decisions. (Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A. V Automotive, LLC)
These decisions and the memo will be informative on how the courts and the USPTO determine the subject matter eligibility, and may bring some clarity regarding the eligibility of software related patents and offer best practices for demonstrating patent eligibility.
The Federal Circuit in Enfish ruled that the subject patent was directed to patent eligible subject matter, whereas in TLI Communications, the subject patent was found to be directed to ineligible subject matter.
In Enfish, LLC v. Microsoft Corp, U.S. Court of Appeals held that the claimed database software designed as a “self-referential” table is patent eligible under 35 U.S.C. § 101 because it is not directed to an abstract idea. While the decision does not change the subject matter eligibility framework, it provides additional information and clarification on the inquiry for identifying abstract ideas (Step 2A of the subject matter eligibility examination guidelines)
The Federal Circuit highlighted several important points regarding the subject matter eligibility analysis, in particular regarding whether a claim is directed to an abstract idea (Step 2A). First, the court noted that when determining whether a claim is directed to an abstract idea, it is appropriate to compare the claim to claims already found to be directed to an abstract idea in a previous court decision. Second, the court emphasized that the “directed to” inquiry applies a filter to claims, when interpreted in view of the specification, based on whether their character as a whole is directed to a patent ineligible concept. Third, the Federal Circuit cautioned against describing a claim at a high level of abstraction untethered from the language of the claim when determining the focus of the claimed invention. Fourth, the court stated that an invention’s ability to run on a general purpose computer does not automatically doom the claim.
The Federal Circuit in Enfish stated that certain claims directed to improvements in computer related technology, including claims directed to software, are not necessarily abstract (Step 2A)
The Federal Circuit stated that the Enfish claims were not ones in which general-purpose computer components are added after the fact to a fundamental economic practice or mathematical equation, but were directed to a specific implementation of a solution to a problem in the software arts, and concluded that the Enfish claims were thus not directed to an abstract idea (under Step 2A).
In TLl Communications LLC v. A. V. Automotive, LLC on May 17, 2016, federal circuit stated that the TLI claims describe steps of recording, administration and archiving of digital images, and found them to be directed to the abstract idea of classifying and storing digital images in an organized manner (Step 2A). The court then found that the additional elements of performing these functions using a telephone unit and a server did not add significantly more to the abstract idea because they were well-understood, routine, conventional activities (Step 2B).
As a take away from the above case, in this memo Robert Bahr, Deputy Commissioner for Patent Examination Policy mentioned that when performing an analysis of whether a claim is directed to an abstract idea (Step 2A), examiners are to continue to determine if the claim recites (i.e., sets forth or describes) a concept that is similar to concepts previously found abstract by the courts. The fact that a claim is directed to an improvement in computer-related technology can demonstrate that the claim does not recite a concept similar to previously identified abstract ideas.
Some Practice tips drafting patents relating to software inventions to avoid 101 issues:
Link the software claim to component(s) and show the relation, how the software is controlling the mentioned component(s) or claim the software which improves the operation of the computer itself.
