24/05/2016
The eligibility of computer implemented inventions remains a hot topic in the US especially following the Supreme Court decision in Alice Corporation Pty Ltd v CLS Bank International et al. (Alice v CLS) of 19 June 2014 (see our earlier blogs). This decision asks as many questions as it gives answers. Practitioners and applicants alike have been seeking clarification particularly when prosecuting patent applications before the US Patent and Trade Mark Office (USPTO). There have been several helpful updates to the Interim Guidance on Subject Matter Eligibility provided by the USPTO throughout May 2016 as follows:
- “Memorandum – Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection” published on 4 May 2016
- “Subject Matter Eligibility Court Decisions (Formerly Appendix 3)” published on 6 May 2016;
- “Index of Eligibility Examples” published on 17 May 2016; and
- “Memorandum – Recent Subject Matter Eligibility Decisions (Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A.V. Automative [sic], LLC)” published on 19 May 2016.
The first and fourth of these are most useful in the context of computer implemented inventions. The second of these updates the summary of significant US court decisions and the third of these includes an index of these examples to include those from life sciences reported here.
The first Memorandum addresses: (i) how USPTO examiners should formulate a subject matter eligibility rejection, and (ii) how USPTO examiners should evaluate an applicant response to such a rejection. Office actions provided by USPTO examiners must provide an explanation as to why each claim is unpatentable, which must be sufficiently clear and specific to provide to the applicant sufficient notice of the reasons for ineligibility and enable the applicant to effectively respond. When evaluating a response, examiners must carefully consider all of the applicant’s arguments and evidence rebutting the subject matter eligibility rejection. This is helpful as previously the examiners’ reasoning had sometimes been boilerplate and therefore difficult to try to focus arguments in rebuttal.
The fourth new publication discusses and contrasts two recent decisions of the US Court of Appeals for the Federal Circuit namely Enfish, LLC v. Microsoft Corp. (Enfish) and TLI Communications LLC v. A.V. Automotive, LLC (TLI). Enfish is the second decision of the Federal Circuit after DDR Holdings, LLC v. Hotels.com, L.P. following the Supreme Court decision Alice v CLS in which the claims of a computer implemented invention were found to relate to patent eligible subject matter. The claims in suit relate to database software designed as a self-referential table. As stated in the USPTO Memorandum, “The court asked whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database), or instead on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. To make the determination of whether these claims are directed to an improvement in existing computer technology, the court looked to the teachings of the specification. Specifically, the court identified the specification’s teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements.” These are along the lines of the requirements of the European Patent Office.
The TLI patent relates to a method and system for taking, transmitting, and organizing digital images. The claims were found by the Federal Circuit not to relate to patent eligible subject matter. TLI “provides a contrast between non-abstract claims directed to an improvement to computer functionality and abstract claims that are directed, for example, to generalized steps to be performed on a computer using conventional computer activity. Specifically, the court stated that the TLI claims describe steps of recording, administration and archiving of digital images, and found them to be directed to the abstract idea of classifying and storing digital images in an organized manner… The court then found that the additional elements of performing these functions using a telephone unit and a server did not add significantly more to the abstract idea because they were well-understood, routine, conventional activities…The fact that 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.”
The updates to the Interim Guidance on Subject Matter Eligibility are a positive step for practitioners and applicants in understanding how tests of patent eligibility should be applied by USPTO examiners and another positive decision from the Federal Circuit shows that computer implemented inventions are patentable in the US when the relevant steps of the Alice v CLS test are met.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
