Recently, the United States Patent and Trademark Office released several patent eligible subject matter examples, which together with the recently released patent eligibility guidance will give applicants, patent prosecutors and patent examiners more information about how the USPTO interprets the state of the law in this all-important area.
To recap, in December 2014, the USPTO released Interim Eligibility Guidance, which provided information about how the Office interprets 35 U.S.C. 101 in light of recent Supreme Court decisions. This latest interim guidance supplements the guidance given by the office in June 2014 relative to the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 2347 (2014). This guidance supersedes the March 4, 2014, eligibility guidance for claims involving laws of nature, natural phenomena and natural products, which was issued relative to the Supreme Court’s decisions in Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. __, 132 S. Ct. 1289 (2012) and Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __, 133 S. Ct. 2107 (2013).
The USPTO interim guidance, largely reminiscent of the KSR Guidelines put out by the Office in 2010, goes through cases one by one. The USPTO explained the facts, provides representative claims and then explains the holding in each case so that patent examiners can understand the teaching point of the case and how to apply the holding in similar situations moving forward. Perhaps most notable, at least on the first review, is that the USPTO incorporated the recent Federal Circuit decision in DDR Holdings, where the Federal Circuit (per Judge Chen) found that the software patent claims at issue in the case were patent eligible.
In a blog post announcing this 101 guidance, Commissioner for Patents Margaret (“Peggy”) Focarino explained that “the guidance reflects a significant change from the examination guidance previously issued in response to Myriad and Mayo. The changes were triggered by the feedback we solicited and received from the public, as well as refinements necessitated by the Alice Corp. decision.”
The industry wanted more information relative to how the USPTO would interpret the abstract idea doctrine in light of Alice. The USPTO continued to labor to come up with examples, fully aware that the abstract idea guidance wasn’t as thorough as ideal given the relative newness of the Alice decision and the much longer time the USPTO had to consider patent eligibility in the life sciences arena post Myriad and Mayo.
“We understand that examples are helpful, and we are going to continue to work on additional examples,” explained Drew Hirshfeld, Deputy Commissioner for Patent Examination Policy, in a telephone interview. “We are hoping people will comment on these examples during the open comment period. That would be helpful.” To be ensured of consideration, written comments must be received on or before March 16, 2015. Comments should be sent by electronic mail message to: 2014_interim_ guidance@uspto.gov.
The abstract idea hypothetical examples provide eight different scenarios, four of which demonstrate patent-eligible subject matter and 4 of which demonstrate patent-ineligible subject matter. In one of the hypotheticals provided, the USPTO gives an example of patent eligible claims directed to both a computer-implemented method and a computer-readable medium. “This hypothetical is to show that not all software is an abstract idea,” Hirshfeld explained.
The first two hypotheticals are particularly enlightening for patent applicants.
Hypothetical 1 provides an example of software that isolates and removes malicious code from electronic messages. The USPTO explains why these claims are patent eligible as follows:
The claim is directed towards physically isolating a received communication on a memory sector and extracting malicious code from that communication to create a sanitized communication in a new data file. Such action does not describe an abstract concept, or a concept similar to those found by the courts to be abstract, such as a fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship. In contrast, the invention claimed here is directed towards performing isolation and eradication of computer viruses, worms, and other malicious code, a concept inextricably tied to computer technology and distinct from the types of concepts found by the courts to be abstract. Accordingly, the claimed steps do not recite an abstract idea. Nor do they implicate any other judicial exception. Accordingly, the claim is not directed to any judicial exception (Step 2A: NO). The claim is eligible.
In Hypothetical 2, which is based on the DDR Holdings case, the USPTO explains:
The claim does not recite a mathematical algorithm; nor does it recite a fundamental economic or longstanding commercial practice. The claim addresses a business challenge (retaining website visitors) that is particular to the Internet. The claimed invention differs from other claims found by the courts to recite abstract ideas in that it does not “merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” No idea similar to those previously found by the courts to be abstract has been identified in the claim.
The hypothetical also specifically instructs examiners that if no abstract idea is identified, “the claim should be deemed to be not directed to a judicial exception. The claim is eligible.”
Tags: eligible, patent, Patent eligibility, Patent Office, patentable subject matter, patents, USPTO
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