US software patents: how to determine patentability

Determining the patentability of a software invention in the US can be tricky.   Some guidance is given by the US examination guidelines used by examiners.

I'd like to take you on a tour of the the US examination guidelines.

This post is our first stop of the tour, and focuses on the 2014 Interim Eligibility Guidance Quick Reference Sheet issued by the USPTO for its patent examiners.

The reference sheet captures some of the logic behind the US Supreme Court decision Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014).

US patent examiners are directed to follow a process represented by this flow chart:

Things not in the flow charts as such but are very important include:

  1. The examiners are directed to establish the broadest reasonable interpretation of the claim.  Software may be described using overly "abstract" language (a dangerous word in this context as will become clear).  It is entirely possible that an examiner will insist a much broader interpretation than intended by an applicant, insisting that the invention is even more abstract than a plain reading may suggest.
  2. The examiners are directed to analyse a claim as a whole when evaluating for patentability.  Drafting claims that "tell the right story", is a good idea.  It's good that there is scope to do this over the length of the claim, and to weave in interactions between the technical (computing) features of the claim.
Now to the flow chart.

Step 1 "Is the claim to a process, machine, manufacture or composition of matter".   

This should not be too hard a hurdle to jump, provided that the claim has been drafted in view of (1) and (2) above, and includes what are unambiguously computing features.  Software implements a process.

Step 2A "Is the claim directed to a law of nature, a natural phenomenon, or an abstract idea (judicially recognised)".  

This is were things get a bit tricky.  

It's the "abstract idea" concept that is used against software patent application. There is not much guidance now on what an "abstract idea" is.  "I know when I see it" seems to be the usual approach.

Abstract ideas are bad.  They are not patentable. If the examiner is of the view that the heart of the invention is an abstract idea, even if it involves software, then the claim is on shaky ground.  The broadest reasonable interpretation is an issue becuase abstract claim language may give the examiner and excuse to argue "too abstract" and head down the road to rejection.  

Conversely, however, if there is no hint of an abstract idea (e.g. the claim is about hardware) then the claim should pass this test.  

Step 2B "Does the claim recite additional elements that amount to significantly more than the [abstract idea]".  

The claim is not patentable if the answer is no.  I believe, however, that a claim is not necessarily invalid merely because it contains an abstract idea.  

How much is "significantly more than  the [abstract idea]"? This is not clear from the Reference Sheet, however I believe that this is a reference to Alice, which states that patentability requires something extra that embodies an inventive concept must be added to the abstract idea.    Even that is still not clear, in my opinion.

The Reference Sheet still leaves many questions unanswered, but at least it provides a foundation from which we can understand other the developments.

You might also want to look at this post, which discusses a court decision Thales Visionix v. USA and Elbit Systems (Ct. Fed. Clm. 2015) on the patentability of software. Thales Visionis expresses the view that "abstract ideas" that are "building blocks" of a technology can not be protected.