As I pointed out in a previous blog post, strategies which give software patent applicants
time and flexibility to amend patent claims are valuable in counteracting the
effects of the US Supreme Court’s Alice decision. This is partially because the
United States Patent and Trademark Office (USPTO) continues to issue clarifying
guidelines for applicants to deal with the impact of the Alice decision.
This is borne out by recent
events. At the start of May 2016 the USPTO issued further eligibility guidance.
Since many software patents have been rejected due to claims allegedly reciting “abstract
ideas”, this post focuses on the material in the eligibility guidance pertinent
to abstract ideas.
Firstly, if an examiner concludes
that a patent claim recites a court-identified abstract idea, then this guidance pressures the examiner to cite the relevant court decisions.
Next, the guidance pressures the examiner to identify additional elements recited in the claim
beyond the abstract idea, and explain why either
individually or in combination these elements do not amount to more than
the abstract idea. The memorandum goes on to emphasize the importance of
addressing the combination of additional elements.
When an additional element is
considered individually by the examiner, the additional element may be enough
to qualify as "significantly more" if it
- meaningfully limits the abstract idea,
- improves another technology or technical field,
- improves the functioning of a computer itself, or
- adds a specific limitation other than what is well-understood, routine, conventional activity in the field or unconventional steps that confine the claim to a particular useful application.
If an element does not amount to
significantly more individually, it can still amount to significantly more when
considered in combination with the other elements of the claim. With specific
reference to software, it is important that the elements not be seen as generic
computer components performing generic, that is, well-understood, routine and
conventional functions.
So what does this mean for software
patent applications? Firstly, software patent applicants should adopt the following best practices:
- drafting claims in such a way so as to not be considered abstract,
- providing sufficient written support for claims to be drafted in such a manner, and
- including extra explanations within the specification to “distance” the claimed invention from generic computer components performing generic functions.
With regard to the last point above, extra care should be paid to describing the hardware on which the software would run. The specification should describe the hardware using non-generic computer components and explaining how, for example, the software differs from generic software programs as understood by one of skill in the art.
“Defence in depth” is also a useful tactic. That is, there should be sufficient supporting material in the specification to provide claim amendment flexibility in the event of an abstract idea rejection.
Finally, pressuring examiners to explain their subject matter ineligibility rejections helps reveal the examiner's mindset to the applicant. The applicant will then be better positioned to move the claim away from the “danger area”.
