On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("July Update").  In the July Update, the Office provided recommendations and resources for examiners in addition to those in the Office's 2014 Interim Guidance on Subject Matter Eligibility.  In particular, the Office provided procedural and substantive guidelines regarding the examination of inventions that may include subject matter that does not meet the requirements of 35 U.S.C. § 101.  For a more detailed overview of the July Update, see our review thereof below.

The Office requested public comments on the July Update, the comment period of which ended on October 28, 2015.  The Office recently published the comments it received from a number of organizations, law firms, companies, and individuals.  This is the second in a series of articles regarding the comments, and covers those provided by BSA – The Software Alliance.

BSA is a software industry advocacy group, counting Apple, Dell, IBM, Microsoft, Oracle, Salesforce, and Symantec among its members.  The companies represented by BSA collectively hold more than 100,000 U.S. patents, and invest billions of dollars into technology research and development.  The vast majority of these patents and R&D activities are directed to software; thus, BSA has a vested interest in the Office's interpretation and application of the Alice v. CLS Bank test.

BSA begins by making an observation made by many others -- that the Office has been applying the Alice test in an inconsistent fashion, "with dramatic differences between examiners' interpretation of Alice and the PTO Subject Matter Eligibility guidelines."  The resulting uncertainty "creates apprehension in the software field, which, in turn, discourages investment in important technologies."  But BSA members also would like to rely on Alice and its progeny to help in "weeding out truly abstract patents and patent applications that can be asserted in an abusive manner."  Overall, BSA wants a "consistent and predictable intellectual property framework" that provides a foundation for member investment in new technologies.

To achieve these goals, BSA made two specific recommendations:  that examiners provide a clear rationale for patent-eligibility rejections, and the Office publish more examples of patent-eligible claims involving methods of organizing human activity.

Regarding the first recommendation, the July Update does state that examiners have the burden to provide a prima facie case of patent-ineligibility.  BSA advocates that for the prima facie case to be made out, examiners must "clearly articulate their reasons for a subject matter eligibility rejection."  BSA notes that its members have recently received "many types of boiler plate rejections" that are insufficient in this regard.  Particularly, these rejections have included "characterizations of the abstract idea akin to a field of the invention rather than tied to the specific invention embodied in the claims."  Such rejections, according to the BSA, fail to "provide the applicant with any guidance as to how to address the examiner's concerns."  BSA would prefer the rejections to "include the underlying reasoning in support of a conclusion that individual elements (or the ordered combination of elements) of a claim fail to provide an inventive concept," and that this reasoning is tailored to the language of the claims.

Indeed, this point hits at the core of the many practical difficulties with implementing the Alice test.  Unless the examiner provides a detailed rationale for rejecting claims under § 101, the applicant is left with little with which to work.  All too often, examiners reject claims in a terse and conclusory fashion, without fully applying both prongs of Alice.  Consequently, it is difficult or impossible to determine whether the examiner has proper grounds for the rejection, or if the applicant should rebut the examiner.  And such rejections are unnecessarily difficult to rebut when the examiner has not taken a clear position.

BSA recommends that § 101 rejections should be made using a similar level of detail as § 103 rejections.  From the Supreme Court's KSR v. Teleflex decision, it is now well understood that "rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."  BSA suggests that the Office instruct examiners to provide specific evidence in patent-eligibility rejections, and that the Office's quality assurance procedures identify when such rejections lack clear articulation.

Regarding the second recommendation, in the July Update the Office stated that abstract methods of organizing human activity include (i) managing relationships or transactions between people, (ii) satisfying or avoiding a legal obligation, (iii) advertising, marketing and sales activities or behaviors, and (iv) certain types of mental processes and planning.  BSA is concerned that "some examiners may improperly look to extend the scope of abstract ideas to any software invention which has an end effect of improving organization of human activities."  This would be improper because not all inventions that improve the organization of human activities are fatally abstract.  As examples, BSA states that "a process by which Global Positioning Satellites use data to redirect traffic patterns, a system that automatically reorders a task list of a user based on context, or a new type of board game" are methods of organizing human activity that could be claimed in a fashion that meets the Alice requirements.  Consequently, BSA recommends that the Office provide more patent-eligible examples of this nature.

To put this another way, a claim directed to a disembodied process for managing a task list might be patent-ineligible under Alice, but this might not be the case for another claim directed to a software invention for automatically updating, re-prioritizing, and displaying a task list.  The Office has already provided useful examples of patent-eligible methods for distribution of stock quote and graphical user interface features in the July Update.  More of these examples for methods of organizing human activity would be welcome.