Recent USPTO Guidance Offers Insight for Software Patent Eligibility

By now most of you have probably heard that "software patents" and "software patent applications"[1] have had a rough time for the past 4 ½ years. Some of you have probably even heard someone say that it is not possible to get a "software patent" in the United States anymore. And while the latter notion is not accurate, it has been very difficult to get a "software patent" following the Supreme Court's 2014 decision in Alice Corp. v. CLS Bank International.[2]

But now, there's good news to report on the "software patent" front. Under its recently-appointed new Director, the United States Patent and Trademark Office (USPTO) has issued a new Guidance relating to patent subject matter eligibility. Most notably, the Guidance, unlike the federal courts, provides some much needed parameters on the definition of what is and what is not an unpatentable "abstract idea."

"Judicial Exceptions"
For a little background, over the past several decades our federal courts have created what have been labeled "judicial exceptions" to the subject matter that is patentable in the United States. Under our statutory law, processes, machines, manufactures, and compositions of matter are patentable subject matter. The unpatentable "judicial exceptions" developed by the courts include natural phenomena, laws of nature, and abstract ideas.[3]

Unpatentable Abstract Ideas
While the most recent Guidance does not address the natural phenomena or laws of nature judicial exceptions, it does set some boundaries for what can be considered an unpatentable abstract idea. First, the Guidance states that abstract ideas generally fit into one of only three categories – mathematical concepts, certain methods of organizing human activity, and mental processes. Except in rare cases, an "abstract idea rejection" is improper if the claimed invention does not fit into one of those three categories.

Even if the claimed invention does fit into one of those three categories, that's not the end of the analysis. The claims which define the software-related invention must next be analyzed to determine if they recite additional elements "that integrate the identified judicial exception into a practical application." In other words, the inventor's legal description of the invention must be analyzed to determine if it describes additional components or features of the invention that convert the abstract idea into a practical process, machine, manufactured article or composition of matter. If the additional elements do integrate the judicial exception into a practical application, then an "abstract idea rejection" is improper.

The Guidance provides the following examples of additional elements that might integrate a judicial exception into a practical application:

• An additional element reflects an improvement in the functioning of a computer or other technology
• An additional element applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition
• An additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim
• An additional element effects a transformation or reduction of a particular article to a different state or thing
• An additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception

And even if the additional elements do not integrate the judicial exception into a practical application, the claims must be analyzed to determine if they include elements showing an inventive concept that transforms the judicial exception into eligible subject matter. Importantly, the USPTO must demonstrate that the additional elements do not "involve more than performance of well-understood, routine, and conventional activities (WURCA) previously known to the industry."

It remains to be seen how the courts will interpret the WURCA language, but an argument can now be made that this language requires the USPTO to do more than merely identify an item of prior art that discloses one or more additional elements. That is, the USPTO should also be required to demonstrate that the item of prior art was known in the industry.

Conclusion
"Software patents" and "software patent applications" have been under attack for more than four years, but with the new USPTO Guidance, inventors are armed with more than just a butter knife in the gunfight that can be patent prosecution and litigation.

[1] "Software patents" and "software patent applications" are the commonly-used terms to describe patents and patent applications that are directed to any computer-implemented method or process. 

[2] 573 U.S. 208, 134 S.Ct. 2347 (2014).

[3] Unlike processes, machines, manufactures, and compositions of matter which are expressly identified in our statutes, the three judicial exceptions are nowhere to be found in our statutes.  They are entirely a product of our federal judges.