The value of strategies which give software
patent applicants time and flexibility to counteract the effects of the US
Supreme Court’s Alice decision becomes more apparent every day. As I pointed
out in a previous blog post, these strategies are valuable
because:
- The United States Court of Appeals for the Federal Circuit (USCAFC) continues to issue clarifications of the Alice decision, and
- The United States Patent and Trademark Office (USPTO) continues to issue clarifying guidelines for applicants to deal with the impact of the Alice decision.
The recent USCAFC ruling in Enfish LLC vs Microsoft Corp. and accompanying USPTO memo are prime examples.In its decision, the USCAFC stated that:
"Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract… Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea"
The USPTO memo explained to examiners that:
“The fact a claim is directed to an improvement in computer-related technology can demonstrate that the claim does not recite a concept similar to previously identified abstract ideas.”
Additionally, the USPTO memo cautioned examiners 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." Finally, the USPTO memo highlighted that the fact
that the USCAFC “identified the specification’s teaching that the claimed
invention achieves other benefits” over prior art.
So, what are the main take-home points for patent
applicants? Firstly, it is important to draft the claim to cover the improvement to the prior art. It may even be worthwhile to reduce the scope of the claim around the enhancement or improvement. Furthermore, the applicant should clearly indicate within the specification how the invention either enhances or improves over the prior art.
In all of this, it has been my experience that when it comes to Alice, examiners seem to operate by the "I know it when I see it" rulebook. That is, perception is often a major deciding factor as to whether an Alice rejection is issued or not. To reduce the possibility of negative perception, it is useful to describe the underlying hardware in non-generic terms and have claims which refer the underlying hardware. Speaking from experience, anything which can prevent a claim disappearing down the Alice rabbit-hole from the outset is useful.
In all of this, it has been my experience that when it comes to Alice, examiners seem to operate by the "I know it when I see it" rulebook. That is, perception is often a major deciding factor as to whether an Alice rejection is issued or not. To reduce the possibility of negative perception, it is useful to describe the underlying hardware in non-generic terms and have claims which refer the underlying hardware. Speaking from experience, anything which can prevent a claim disappearing down the Alice rabbit-hole from the outset is useful.
