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Patent office issues new guidance on patentability of software patent applications.

Byline: Rochester Business Journal Staff

In 2014, the Supreme Court of the United States (SCOTUS) rendered its decision in Alice v. CLS Bank, creating significant ambiguity as to when computed-implemented inventions (e.g., software, programmable logic) are patentable in the United States. Last month, the United States Patent and Trademark Office (USPTO)the federal agency charged with examining patent applications and determining whether to issue a U.S. patentpublished guidelines clarifying when computed-implemented inventions are patent eligible. The guidelines demonstrate that, to avoid rejection by the USPTO, patent applications for computed-implemented inventions must contain carefully written descriptions known as patent claims, which define and create limitations on the scope of protection afforded by the requested patent.

In Alice, SCOTUS adopted a two-part test to determine whether a particular computed-implemented invention is patentable. To pass the first test, the patent claims of an application must be directed to more than an "abstract idea." An "abstract idea" can be an algorithm, method of computation or other general principle. If the patent claim is solely directed to an "abstract idea," then to be patent eligible the patent claims must contain "something extra" that embodies an "inventive concept" sufficient to "transform" such "abstract idea" into a patentable invention.

Unfortunately, SCOTUS failed to provide clear guidance as to what is and what is not an "abstract idea" and also did not devise a clear framework for determining whether a patent claim included the requisite "something extra." In reality, the two-part test introduced a standard that invites subjectivity and differing approaches on application in determining when software is patentable. As a result, since the Alice decision, courts have invalidated a vast number of software and business-method patents and the number of such patents issued by the USPTO has drastically decreased.

The recent USPTO guidelines, however, serve to provide greater clarity as to the functional language to be used in patent claims and include examples of patent claim limitations to assist with overcoming patentability rejections by the USPTO. Although the guidelines were designed for USPTO examiners with their review of applications, they also serve to assist patent practitioners with drafting claims that are more likely to survive patentability challenges and to more efficiently prosecute patent applications. These guidelines account for recent developments in case law, particularly around software-based realization and computer-implemented methods but also extend to medicine, robotics, electronics, manufacturing, wearables and networking systems. They also further distinguish a "patentable" invention and an "abstract idea" and address the use of functional language in computer-implemented inventions.

As required by the two-part test devised in Alice, the USPTO will continues to evaluate claims by first determining whether the claims are directed to an "abstract idea." If solely directed to an "abstract idea" the USPTO will still move to the second part of the test, but the new guidelines provide a more detailed eligibility analysis than required under prior guidance. Instead, USPTO Examiners will now identify patent claim limitations that recite an "abstract idea" and determine whether the identified limitations fall within the subject matter groupings of "abstract ideas" enumerated in the guidelines.

If USPTO Examiners find that the identified limitations are "abstract ideas", they will evaluate integration into a practical application by (i) identifying whether there are any additional elements recited in the patent claim beyond an "abstract idea" and (ii) evaluating those additional elements individually and in combination to determine whether they integrate the exceptions into a practical application. The Patent Office has explained that this new detailed eligibility analysis will promote early and efficient resolution of patent eligibility of software and increase certainty and reliability.

The new guidelines also provide examples of additional patent claim elements that integrate exceptions into practical applications (the second step), including elements that:

Improve the functioning of a computer or other technology;

Apply a judicial exception (i.e., an abstract idea, a law of nature or phenomenon) to effect a particular treatment for a disease or medical condition;

Implement a judicial exception with a particular machine or manufacture that is integral to the claim;

Affect a transformation of a particular article to a different state; or

Apply the judicial exception in a meaningful way beyond generally linking the judicial exception to a particular technological environment.

The guidelines also provide examples of additional patent claim elements that are not sufficient to integrate exceptions into practical applications, including elements that:

Merely recite the words "apply it" or an equivalent;

Merely include instructions to implement an abstract idea on a computer or use a computer to perform an abstract idea;

Add insignificant extra-solution activity to the judicial exception; and

Do no more than generally link the identified claim elements to a particular technological environment or field of use.

Before filing a patent application, it is prudent to perform a cursory review of the patent claims and the specification to ensure practical application elements are recited. We also recommend incorporating these guidelines into drafting new patent claims and amending pending claims to overcome the revised eligibility analysis set forth in the guidelines.

The USPTO also issued guidelines to address the examination of computer-implemented functional language. Claims of software patents often run into problems at the USPTO for claiming purely functional methods without reciting how the claimed function is achieved, in any specificity.

USPTO Examiners will now determine whether one of ordinary skill in the art would consider the claim to include sufficiently definite structure for performing the claimed function. If the claims include functional limitationslimitations that define an element in terms of the function it performswithout reciting the structure, materials or acts that perform the function, the Examiner will determine whether the claims have proper written descriptions and support in the disclosure of the application.

Much to the frustrations of developers and founders, the patentability of computer-implemented inventions is often subject to the how the patent application and patent claims are written. The USPTO's guidance can serve as an additional checklist during drafting to increase the odds of patent issuance. It is important to include patent claims in computer-based applications that include non-functional claim elements. It is also important to draft specifications for computer-based patent applications such that functions are tied to particular components and those components are adequately described so that computer-implemented inventions can still be functionally claimed.

Jeremy Wolk is a partner in Nixon Peabody LLP's Business & Finance department. He developed this article with Jennifer Hayes, Anthony M. Duncan, Jr., and Emily Sandhaus, attorneys in the firm's Intellectual Property practice.

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Publication:Rochester Business Journal
Geographic Code:1USA
Date:Feb 25, 2019
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