At the end of a year in which the patent eligibility of software inventions came under fire like never before, the USPTO finally issued its long-awaited 2014 Interim Guidance for Subject Matter Eligibility, which describes how patent examiners should assess whether a patent application includes patent-eligible subject matter. While the new Interim Guidance may not satisfy many inventors who wish to patent their software, it can help inventors identify the types of inventions that have a chance of success, as well as those for which a patent application may be an exercise in futility.
The new Interim Guidance was prompted in part by several U.S. Supreme Court decisions, including the Court’s June 2014 decision in Alice v. CLS Bank. In Alice, the Court established a two-part test for patent eligibility. Under the Alice test, one must first “determine whether the claims at issue are directed to a patent-ineligible concept.” Then, one must determine whether there are sufficient limitations present in the claim “to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Since Alice, courts have overturned a significant number of patents covering software and business methods as lacking patent-eligible subject matter.
When it comes to software, the Interim Guidance provides direction almost exclusively by example, listing cases in which various courts have overturned or upheld patents relating to software. However, some general themes are apparent throughout the document:
- The USPTO will consider software that merely implements an economic practice, a method of organizing human activity, or a mathematical formula as being directed to an abstract idea. Examples include methods of using advertising as currency, and methods of managing a game of bingo.
- To be “significantly more” than an abstract idea, the claim must add something that is more meaningful than simply linking the use of the idea to a computer. Examples of what may be “significantly more” include: (i) applying the idea to improve another technology or technical field; (ii) using a particular machine (other than a general purpose computer); or (iii) using the invention to transform or reduce an article to a different state or thing.
Software patent applicants should expect that USPTO Examiners will liberally apply the first element of the Alice test and will consider many software inventions to be “directed to an abstract idea.” In order to set up a patent application for the best chance of success, applicants should describe and claim something that the Examiner can characterize as “significantly more.” This may mean:
- Claiming a process that requires a computer or other machine, and which is something that a human cannot do. (Example: SiRF Technology v. ITC, in which the claims required a GPS receiver.)
- Claiming a process that has a specific application to a particular technology. (Example: Research Corp. Tech. v. Microsoft, in which the claims related to a method of improving a digital halftoned image.)
- Claiming a process that does more than “use the Internet” to perform a process, and which instead solves a particular problem that specifically arises from the use of computers or networks. (Example: DDR Holdings v. Hotels.com, in which the claims related to a system via which an operator of a website can recognize the source of a link from which a consumer reached the website.)
The new Interim Guidance acknowledges that the law of patent-eligibility is still in flux, as it repeats a theme from USPTO’s 2010 Patent Subject Matter Eligibility Guidance that cautioned Examiners to not rely on Section 101 of the Patent Act as the sole basis for rejecting a claim. The USPTO has also established an unusually long three-month public comment period for the new Interim Guidance. Thus, even though the USPTO will reject many software patent applications under its new Interim Guidance, it recognizes that future court decisions are likely to result in additional changes to the body of law relating to subject matter eligibility.