The Patenters - חברה לרישום פטנטים

Update on patentability of subject matter: software


Published Feb. 13th 2017

In July 2016 I discussed the patentability of software-related inventions (article in Hebrew) and promised to follow up.  I participated in an excellent seminar in London that brought me up to date with the current situation.  

In Europe reportedly at the EPO (European Patent Office) allowability of patents has risen by about 50% in 2016, and judging by Michael Piper’s talk on patentable subject matter (software related inventions), mainly in US, now is a good time to file software-based patent applications.   

Michael, from Conley Rose, Texas, discussed mainly his experiences with the USPTO (United States Patent & Trademark Office).  

I am aware that a few years ago the approach of the USPTO to patentability of software-related subject matter was dictated by court decisions such as Alice Corp. v. CLS Bank International, a 2014 decision of the United States Supreme Court about patentable subject matter (patent eligibility), where the issue in the case was whether certain claims about a computer-implemented, electronic escrow service for facilitating financial transactions covered abstract ideas ineligible for patent protection.   Wikipedia writes about Alice: “Despite the Court’s avoidance of mention of software in the opinion, the Alice decision has had a dramatic effect on the validity of so-called software patents and business-method patents.[40] Since Alice, these patents have suffered a very high mortality rate.”

Stephen Schreiner wrote on 17 October 2014, “Four months after Alice, and two years after Mayo — the decision that announced the new two-step inquiry …the application of the abstract ideas doctrine remains elusive. A major challenge is that the first prong of the Mayo inquiry (i.e., “Is the claim directed to an abstract idea?”) tends to be case-dispositive. If the answer is “no,” the inquiry ends and the claim is deemed statutory. If the answer to the first prong is “yes,” the analysis proceeds to the second prong of the Mayo inquiry (i.e., “Has ‘enough’ been added to produce a patent-eligible application of the abstract idea?”). Because the second prong analysis normally disregards both the abstract idea and limitations that are “well-known” or “conventional,” claims are routinely found to be nonstatutory if the analysis reaches the second step”

According to Michael, this is no longer the case.

As time goes by, the USPTO is accumulating more examples of cases where the subject matter is eligible for a patent.  The applicant, in encountering a 101-type rejection (vs subject matter eligibility) can peruse these examples and refer to it in analogy to the present case. Michael claims this strategy is highly effective. Moreover, the attitude of the USPTO has markedly changed and is generally no longer biased against software-based inventions.  An interview with the examiner is usually highly effective in sorting out what is behind the examiner’s rejections.

I have long thought that Alice, and its predecessor at the Supreme Court Bilski v. Kappos, another case involving software for a business method, were not very instructive for determination of subject matter related to software.

Apparently, now the courts in US are heavily lending an ear to USPTO’s attitudes and approaches,  although Michael cautions that the courts may not accept an argument based on the USPTO examples and advises to come to the table with additional ammunition.

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