Following up on the Enfish and TLI Communications cases (see Alice Update–Patentability of Software-Related Inventions– Enfish v. Microsoft), the USPTO issued revised guidelines for Examiners relative to 35 U.S.C. 101 and whether claims are directed to an abstract idea. Among the key points of the revision to the guidelines are (quoting from the guidelines):
- “[W]hen determining whether a claim is directed to an abstract idea, it is appropriate to compare the claim to claims already found to be
directed to an abstract idea in a previous court decision.”
Claims should be “interpreted in view of the specification, based on whether their character as a whole” to determine patent eligibility.
- “[T]he Federal Circuit cautioned against describing a claim at a high level of abstraction untethered from the language of the claim when determining the focus of the claimed invention.”
- “[T]the court stated that an invention’s ability to run on a general purpose computer does not automatically doom the claim.”
- “The Federal Circuit in Enfish stated that certain claims directed to improvements in computer related technology, including claims directed to software, are not necessarily abstract.”
- “Explaining that software can make non-abstract improvements to computer technology just as hardware can, the court noted that claims directed to software, as opposed to hardware, also are not inherently abstract.”
- “Therefore, an examiner may determine that a claim directed to improvements in computer-related technology is not directed to an abstract idea … and is thus patent eligible …”
- “In particular, a claim directed to an improvement to computer-related technology (e.g., computer functionality) is likely not similar to claims that have previously been identified as abstract by the courts.”
- To make the determination of whether these claims are directed to an improvement in existing computer technology, the court looked to the teachings of the specification. “Specifically, the court identified the specification’s teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements.”
- “It was noted that the improvement does not need to be defined by reference to ‘physical’ components. Instead, the improvement here is defined by logical structures and processes, rather than particular physical features.”
- “The Federal Circuit stated that the Enfish claims were not ones in which general-purpose computer components are added after the fact to a fundamental economic practice or mathematical equation, but were directed to a specific implementation of a solution to a problem in the software arts, and concluded that the Enfish claims were thus not directed to an abstract idea (under Step 2A).”In summary, the USPTO amended its guidelines in two significant ways. First, it acknowledges that, in at least some cases, software-based inventions are entitled to patent protection. Of course, the earlier guidance regarding the necessity for “significantly more” still applies. Secondly, the guidelines require the Examiners to read the claims in view of the Specification and not as stand-alone sentences. Both of these clarifications help improve the likelihood of patentability so long as applicants make sure to continue to follow our earlier suggestions to make the specification as robust as possible, particularly articulating the benefits of the invention.