USPTO releases new guidance on patentability of software

by John Roberts on December 16, 2014

Today the USPTO issued new guidance on the patentability of software and other inventions that have been recently struck down as “abstract ideas” under 35 U.S.C. § 101 in the wake of the Supreme Court’s Alice decision. The updated guidance entitled “2014 Interim Guidance on Patent Subject Matter Eligibility” can be found here:

Example claims are provided to illustrate the analysis set forth in the guidance. A set of examples relating to nature-based products are posted on the USPTO website and a set of examples relating to abstract ideas will reportedly be released shortly. This guidance is the latest–and likely not the last–iteration of the USPTO’s ongoing attempt to implement the Supreme Court’s confusing jurisprudence under Section 101. Earlier this year the USPTO released preliminary examination guidance on evaluating eligibility of claims reciting laws of nature, natural phenomena, and natural products in the wake of Myriad and Mayo. Following that release, the Supreme Court issued the Alice decision. These new interim guidelines attempt to explain the law after Alice as it understood so far.

This new guidance first explains the USPTO’s interpretation of subject matter eligibility requirements in view of the Alice Corp., Myriad, and Mayo Supreme Court decisions and then sets forth an integrated approach for patent examiners in making determinations regarding subject matter eligibility. This guidance incorporates principles emphasized in Alice and provides more details than the USPTO’s initial examination instructions issued immediately after the Alice decision.

This new guidance reflects a significant change from the examination guidance previously issued in response to Myriad and Mayo. The changes were triggered by the feedback the USPTO solicited and received from the public, as well as refinements necessitated by the Alice decision.

This new guidance document is a helpful resource, but until the en banc Federal Circuit or the Supreme Court further clarifies the law in this area, especially the tension between the Federal Circuit’s recent contradictory Ultramercial and DDR cases applying Alice, patent practitioners and district court judges have little to go on but their gut feel as to whether or not any given software patent is directed to an unpatentable “abstract idea.”

John Roberts


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