The U.S. Patent and Trademark Office recently updated its patentable subject matter guidance. Anyone involved in making filing decisions and/or preparing and prosecuting software or business methods patent applications would be well advised to consult the new documents. I did not provide such a recommendation concerning the USPTO’s initial “Interim” post-Alice guidance, issued in December 2014, inasmuch as that guidance was not much more than a regurgitation of the often inconsistent and irreconcilable case law that practitioners struggle with daily. The updated guidance, however, provides some concrete ideas that may be put into practice in making claim amendments, and presenting arguments in Office Action responses and appeals.
Sort of like a software application that is permanently lodged at the beta stage, the Patent Office continues to call its guidelines, promulgated in December 2014 and updated as of July 2015, “Interim.” Whatever they are called, the present updates do more than simply summarize case law, providing examples of claims that the USPTO says would not be – and more importantly, would be – patent-eligible. The July 2015 guidelines, as the USPTO explicitly states, are clearly responding to complaints from the patent bar that the Patent Office has not explained what subject matter is patent eligible, even as it issues a seemingly endless stream of Section 101 rejections in the wake of Alice Corp. v. CLS Bank.
Again, if you are at all concerned with obtaining patent protection in the software or business methods area, you should read the new guidance from the Patent Office for yourself. However, a summary of important points would include:
Claim elements should be considered both individually and as a whole. The USPTO emphasized, in response to public comments on this point, the importance of examiners considering “all additional elements both individually and in combination to determine whether the claim as a whole amounts to significantly more than” an abstract idea or law of nature. Moreover, the USPTO notes specific examples illustrating “how generic computer components that individually perform merely generic computer functions (e.g., a CPU that performs mathematical calculations or a clock that produces time data) are able in combination to perform functions that are not generic computer functions and that amount to significantly more.”
The examiner has the burden of stating a prima facie case of patent-ineligibility. Although not news, it is worth noting that the USPTO devoted almost 2 full pages of the July 2015 Update discussing the concept of a prima facie patent-eligibility rejection. A prima facie rejection is made by the examiner “clearly articulating the reason(s) why the claimed invention is not eligible, for example by providing a reasoned rationale that identifies the judicial exception recited in the claim and why it is considered an exception, and that identifies the additional elements in the claim (if any) and explains why they do not amount to significantly more than the exception.” The examiner’s “rationale may rely, where appropriate, on the knowledge generally available to those in the art, on the case law precedent, on applicant’s own disclosure, or on evidence. Sample rejections satisfying this burden are found in the training materials, particularly the worksheets for Examples 5‐8.” Although examiners will not make of record the worksheets that the USPTO has prepared for evaluation of patent-eligibility questions, these worksheets give some idea of the analysis that the examiner should provide in an Office Action. While an examiner’s failure to state a prima facie rejection at the end of the day will not carry an appeal, it is nonetheless important to insist that the Office articulate as clearly as possible for the record the basis for a patent-eligibility rejection so that the rejection may be most effectively rebutted.
The USPTO’s new examples provide a good road map for arguing patent-eligibility of certain claims. The Patent Office had previously provided 20 examples of patent-eligibility analyses, all drawn from case law. In seven new examples, the USPTO goes further than it had before, now presenting hypothetical claims that are both patent-eligible and patent-ineligible, including various examples of claims directed to the same general subject matter, based on the same disclosure, where a first claim is deemed patent-ineligible, whereas a second claim includes certain elements that transform the claim into patent-eligible subject matter. These examples could prove to be very useful to practitioners preparing claims for filing, or arguing for the patent-eligibility of pending claims. (Examples 21, 23, and 27 could be particularly useful.)
Some subject matter is clearly outside the bounds of patent-eligibility, regardless of novelty and non-obviousness. The USPTO has provided a terrific “Interim Eligibility Guidance Quick Reference Sheet” (I really like the clear, readable organization and graphics) listing various categories of subject matter that are not patent-eligible. If you look at nothing else, give this reference sheet a quick scan. It should be particularly helpful for those who are not regular filers in the software area, giving an idea of areas where filings are less likely to succeed.
Patent-eligibility rejections will continue to be inconsistent and unpredictable. We are still far from a bed of roses in this area. In discussing the portion of its analysis that looks for markedly different characteristics (MDC) from an abstract idea, the USPTO insists that keeping this analysis in the first part of the two-step Alice test (is there an abstract idea, and if so, is there significantly more than the abstract idea) will ensure that “all claims are consistently analyzed for eligibility regardless of statutory category or the type of exception recited,” e.g., an abstract idea or a law of nature. This assertion begs credulity, inasmuch as, at the end of the day, the patent-eligibility analysis remains a subjective exercise. As such, this analysis will likely frustrate intellectual property owners and patent practitioners for some time to come. Nonetheless, the USPTO’s updated patent subject matter eligibility guidelines could provide at least a glimmer of stability through the chaos.