Recently, the United States Patent and Trademark Office (USPTO) sent a memo to the Examining Corps with information and instructions relating to the recent ruling in Enfish, LLC v. Microsoft Corp. by the United States Court of Appeals by the Federal Circuit. In Enfish, the Federal Circuit ruled that the software patent claims at issue were not abstract and were patent eligible. This marked the first time in 18 months, since the Court’s ruling in DDR Holdings in December 2014, that the Federal Circuit has found software patent claims to be patent eligible.
The USPTO memo was authored by Robert Bahr, who is Deputy Commissioner for Patent Examination Policy. As you would expect, it accurately explains the importance of the Federal Circuit ruling in Enfish. Bahr tells examiners that, based on the Federal Circuit ruling, they “may determine that a claim directed to improvements in computer-related technology is not directed to an abstract idea under Step 2A of the subject matter eligibility examination guidelines (and is thus patent eligible), without the need to analyze the additional elements under Step 2B.” (emphasis in the original) Bahr goes on to tell examiners that a claim that is “directed to an improvement to computer-related technology (e.g., computer functionality) is likely not similar to claims that have been previously identified as abstract by the courts.”
This is significant because the Federal Circuit explained that, since the Supreme Court has never defined the term “abstract idea,” the best one can do is compare claims to previous scenarios that have been decided to be either patent eligible or patent ineligible. Thus, the way to determine whether any particular claim is patent eligible is to subjectively determine whether the claim you are considering is more like a claim that has been previously determined to be abstract or it is more like a claim that has previously been determined not to be abstract.
In the memo, Bahr also makes mention of the more recently decided TLI Communication LLC v. A.V. Automotive, LLC, which was decided by the Federal Circuit on May 17, 2016, and which found that the claims at issue were abstract and did not add substantially more, which made the claims patent ineligible. Bahr explained that the Federal Circuit found that performing the steps of “using a telephone unit and a server did not add significantly more to the abstract idea because they were well-understood, routine, conventional activities.”
Bahr concluded the USPTO memo as follows:
In summary, when performing an analysis of whether a claim is directed to an abstract idea (Step 2A), examiners are to continue to determine if the claim recites (i.e., sets forth or describes) a concept that is similar to concepts previously found abstract by the courts. The fact that a claim is directed to an improvement in computer-related technology can demonstrate that the claim does not recite a concept to previously identified abstract ideas.”
It is also noteworthy that, previously in the memo, Bahr specifically cautioned examiners “against describing a claim at a high level of abstraction untethered from the language for the claim when determining the focus of the claimed invention.”
Tags: Enfish v. Microsoft, patent, Patent eligibility, Patent Office, patents, software patents, USPTO
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