By Andrew M. Nevill, Woodard Emhardt Henry Reeves & Wagner LLP
The United States Patent and Trademark Office (USPTO) recently published a study titled "Adjusting to Alice" that provides the results of an examination of patent examination outcomes after the Supreme Court’s decision in Alice. This study found that recent efforts by the USPTO to provide greater clarity to issues regarding subject matter eligibility have been effective in decreasing uncertainty. The study can be found here.
Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014) was a landmark decision from the United States Supreme Court concerning patent eligibility of software-related inventions. The Supreme Court’s holding that generic computer implementation does not make a patent-ineligible, abstract idea into a patent-eligible invention ran counter to the way in which USPTO had been treating software-related applications before the Alice decision. Some inventions that were previously considered to be patent-eligible no longer qualified for patent protection.
Initially, the Alice decision generated uncertainty regarding the prosecution of software-related patent applications and made it difficult to predict which software inventions would be considered patent-eligible and which would be considered patent ineligible. In the 18 months following the Alice decision, there was a 31% increase in the number of patent applications that were issued a first office action with a rejection for patent-ineligible subject matter. Further, there was greater variability in the number first office action rejections for patent-ineligible subject matter between individual examiners. This made the examination process for software-related applications more unpredictable for patent applicants.
Two recent guidance documents published by the USPTO regarding subject matter eligibility have begun to reverse this trend of uncertainty. The first was an April 2018 memorandum titled “Change in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision” (the “Berkheimer Memo”). Prior to the Berkheimer Memo, an Examiner could conclude that an element of a patent claim was a well-understood, routine, convention activity if that element was widely prevalent or in common use in the relevant industry without being required to provide factual support for this conclusion. After the Berkheimer Memo, the Examiner was required to provide evidence to make a factual determination as to whether the claim elements were common and routinely used.
The subsequent release of the USPTO’s “Revised Patent Subject Matter Eligibility Guidance” in January 2019 (“PEG 2019”) added further clarification for patent applicants. The PEG 2019 clarified that abstract ideas should be grouped in one of three categories: mathematical concepts, certain methods of organizing human activity, and mental processes. The PEG 2019 document also explained that a claim is not “directed to” an abstract idea if the claim integrates the abstract idea into a practical application. A year after the release of the PEG 2019, the number of first office actions for patent-ineligible subject matter has decreased by 25%.
The results of the USPTO study show that the Berkheimer Memo and the PEG 2019 are two useful resources for practitioners who are drafting and/or prosecuting an application for a software-related invention that has potential patent eligibility issues. As the law regarding eligibility of software-related patents continues to be refined, these are references that are available to add a little more certainty to the process.
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