Tag Archives: software patents; patent-eligibility

USPTO updates patent examination guidelines for computer-implemented inventions: Less abstract ideas, more specific algorithms

On January 4, 2019, the U.S. Patent and Trademark Office released new guidance documents that USPTO Patent Examiners are to use when evaluating whether a patent application claims patent-eligible subject matter under Section 101 of the Patent Act. The new documents also address whether claims directed to computer-implemented inventions should be considered to be purely functional and/or indefinite under Section 112 of the Patent Act.

Taken together, the new guidance documents may narrow the situations in which Examiners issue rejections under Section 101 of the Patent Act, but may expand the number of rejections issued under Section 112 of the Patent Act. The documents indicate that inventors who want to patent computer-implemented inventions must be sure that the patent application: (a) describes and claims a practical application of the invention; and (b) discloses specific algorithms for performing claimed functions.

2019 Revised Patent Subject Matter Eligibility Guidance (Section 101)

Unlike previous USPTO patent-eligibility guidance, the new Section 101 guidance focuses on situations in which patent claims should be eligible, and it limits situations in which USPTO Examiners should issue rejections under Sections 101 of the Patent Act.

In particular, the 2019 Revised Subject Matter Eligibility Guidance opens the door to patent-eligibility for patent claims that are limited to practical applications. In particular, the Section 101 guidance states that “a patent claim or patent application claims that recites a judicial exception [i.e., a law of nature, a natural phenomena or an abstract idea] is not ‘directed to’ the judicial exception if the judicial exception is integrated into a practical application of the judicial exception.”

The new Section 101 Guidance states that to determine that a claim recites an abstract idea, Examiners must “(a) identify the specific limitations(s) in the claim … that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) fall within the subject matter groupings” — that is, one of the following judicial exceptions to patentability: (1) mathematical concepts; (2) certain methods of organizing human activity; or (3) mental processes. Laws of nature or natural phenomena are another subject matter grouping to be considered. If the Examiner believes that the claim falls within one of these groupings, the Examiner must “evaluate whether the claim integrates the judicial exception into a practical appplication.”

The new Section 101 guidance instructs Examiners that analysis of whether a claim includes significantly than the judicial exception is only needed if “a claim recites a judicial exception and fails to integrate the exception into a practical application.” The guidance also states that “a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. When the exception is so integrated, then the claim is not directed to a judicial exception … and is eligible.”

Examples of practical applications include:

  • an element that improves the functioning of a computer or other technology;
  • an element that effects a particular treatment or prohylaxis for a disease or medical condition;
  • an element that is operates in conjunction with a particular machine or manufacture that is integral to the claim; or
  • an element that applies or uses the exception in a menaingful way beyond generally linking the use of the exception to a particular technological environment, so that the claim is more than a drafting effort designed to monopolize the exception.

The Section 101 guidance also states claims that include elements that are not well-understood, routine or conventional in a way that does not simply append those elements to the claim may be eligible.

Also significant: even if an Examiner rejects claims under Section 101, the Examiner must still examine each claim under Sections 102, 103 and 112 of the Patent Act.

The 2019 Section 101 guidance “supercedes all versions of the USPTO’s Quick Reference Sheet[s]” and indicates that those prior documents “should not be relied upon” by Examiners or Applicants.

Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. §112

The USPTO’s 2019 Guidance for Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112 provides cautionary warnings to patent applicants who describe and claim computer-implemented inventions in only broad, general terms. This new guidance is intended to address the “problem with broad functional claiming without adequate structural support in the specification” and address “when a claim is purely functional in nature rather than reciting with any specificity how the claimed function is achieved.”

In the past few months, USPTO Examiners have more frequently issued Section 112 rejections against computer-implemented invention claims, even if the claims do not explicitly use means-plus-function language. The new guidance suggests that this is not appropriate by stating that “a claim limitation that does not use the term ‘means’ will trigger the presumption that 35 U.S.C. §112(f) does not apply.”

However, the guidance notes that certain phrases can be generic placeholders for means-plus-function language, in particular: “module for,” “device for”, “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for” and “system for.” The guidance also cautions against phrases that use the term “module” in connection with the module’s function.

The guidance also states: “for a computer-implemented … claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite” (emphasis added). The guidance notes that “the requirement for disclosure of an algorithm cannot be avoided by arguing that one of ordinary skill in the art is capable of writing software … to perform the claimed function.”

 

The new guidance documents took effect on January 7, 2019, the USPTO is accepting public comments on the new guidance through March 8, 2019.

 

 

Federal Circuit finds software license verification technology patent-eligible under Section 101

A new Federal Circuit decision found the claims of a patent directed to software license verification to be eligible for patenting under Section 101 of the Patent Act.

In Ancora Technologies, Inc. v. HTC America, Inc., the court reviewed the claims of U.S. patent 6,411,941, which involved methods of restricting software operation on a computer to be within a license for that computer. Representative claim 1 of the patent is:

A method of restricting software operation within a license for use with a computerincluding an erasable, non-volatile memory area of a BIOS of the computer, anda volatile memory area; the method comprising the steps of:

selecting a program residing in the volatile memory,

using an agent to set up a verification structure in the erasable, non-volatile memoryof the BIOS, the verification structure accommodating data that includes atleast one license record,

verifying the program using at least the verification structure from the erasable non-volatile memory of the BIOS, and

acting on the program according to the verification.

Thus, the method required storage of a license record in a “verification structure” created in a portion of the computer’s BIOS memory.

In its decision, the court noted that as in its Enfish, Visual Memory, Finjan, Core Wireless and Data Technologies cases, “[i]mproving security — here, against acomputer’s unauthorized use of a program — can be a non-abstract computer-functionality improvement if done by a specific technique that departs from earlier approaches to solve a specific computer problem.” The court also found that because in the representative claim “a license record is stored in a particular, modifiable, non-volatile portion of the computer’s BIOS … the claim addresses a technological problem with computers:  vulnerability of license-authorization software to hacking.”

Quoting its SAP America, Inc. v. InvestPic, LLC decision, the court also noted that the claim has “the specificity required to transform a claim from one claiming only a result to one claiming away of achieving it.” Therefore the court stated that it did not need to consider step two of the Alice analysis.


[1] ____ USPQ2d____ (Fed. Cir. Nov. 16, 2018).

[2] 127 USPQ2d 1597 (Fed. Cir. 2018).

Cybersecurity Patent Strategies vs. the Growing Barriers to Software Patents

More and more companies who offer blockchain and other next generation cybersecurity technologies are seeking patents to help protect their competitive position. The U.S. Patent and Trademark Office’s (USPTO’s) Technology Center 2400, which covers networking, multiplexing, cable and security technologies, includes over 200 Patent Examiners who focus on security technologies. TC 2400 issued over 33,000 patents in 2017. During this period, the USPTO’s overall allowance rate was 59.4%.

Despite this apparent boom, patent applications covering cybersecurity technologies have faced increasing scrutiny since the June 2014 U.S. Supreme Court decision in Alice Corporation Pty Ltd. v. CLS Bank Int’l. In Alice, the Court found that a software implementation of an escrow arrangement was not eligible for patenting in the U.S. because it merely involved implementing an “abstract idea” on a computer. The Court did not define the term “abstract idea” other than to describe it as a building block of human ingenuity, or a fundamental concept, including concepts that involve a “fundamental economic practice.”

Since then, the USPTO has issued several guidance documents, and lower courts have issued several opinions, describing when software is and (more often) is not eligible for patenting under Section 101 of the Patent Act. The USPTO typically denies, and courts often strike down, patent applications and patents covering methods of manipulating data, completing financial transactions, and algorithms that do not require any particular hardware other than a general-purpose computer.

Patent applications that focus on financial applications of blockchain technologies often face patent-eligibility hurdles. A search of the USPTO’s Patent Application Information Retrieval (PIR) system indicated that as of January 2018, over 90% of the published applications and issued patents having the term “blockchain” and any combination of “cryptocurrency,” “coin,” or “currency” in the claims were assigned to the USPTO’s Technology Center 3600. (TC 3600 includes the USPTO’s business methods examining unit.) Over 80% of these patents and patents applications received a Section 101 rejection on first action. In addition, the allowance rate in TC 3600 remains far below that of the USPTO’s overall statistics.

Claim Drafting Strategies Continue reading