Patent Law Practice Center

Patent Office gives examiners guidance in light of Enfish

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.”

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