The Software IP Report

The Latest USPTO Patent-Eligibility Guidance (April 2017)

By Charles Bieneman

Categories: Patent Eligibility, Software Patents, The Software IP Report

As you probably know, the USPTO maintains a “subject matter [patent-]eligibility” web page with a plethora of information.  Most recently, on April 26, 2017, the Office posted a “quick reference sheet” illustrating decisions bearing on patent-eligibility analysis under 35 U.S.C. § 101 and the Mayo/Alice test.  Other documents, if you haven’t already taken a look, include guidance for examiners, memoranda on selected Federal Circuit cases, and “example sets illustrating exemplary subject matter eligibility analyses of hypothetical claims and claims drawn from case law.”  Perhaps the most useful document is a compendium of patent-eligibility court decisions going back to 1979.

Interestingly, the newly-posted reference sheet, presumably intended to guide today’s examiners in making patent-eligibility decisions, lists many older cases from the Federal Circuit (and its predecessor, the CCPA), as well as U.S. Supreme Court cases.  Cases following the Mayo and Alice decisions are of course amply covered.

For the first prong of the test (abstract idea or law nature), the reference sheet includes a diagram that cites only the Supreme Court’s 1980 Chakrabarty decision (genetically modified bacteria).  But for the second prong of the test (inventive concept that is significantly more than the abstract idea or law of nature), the provided diagram indicates that some venerable war horses remain on the field.  Unsurprisingly, these include the 1981 U.S. Supreme Court case of Diamond v. Diehr. But the referenced cases also include small gems like In re Abele, 684 F.2d 902 (CCPA 1982) (tomography scanner claims directed to more than a computer algorithm).

The last page of the USPTO’s new patent-eligibility reference lists cases that can be used to flag unpatentable abstract ideas, helpfully organized by four categories of abstract idea:

  1. “An Idea ‘Of Itself’”;
  2. “Fundamental Economic Practices”;
  3. “Mathematical Relationships / Formulas”;
  4. “Certain Methods of Organizing Human Activity”.

Recent non-precedential Federal Circuit cases are included, but helpfully flagged with grayed lettering.  And again, the old warhorses keep their appearance – like that old favorite from the U.S. Supreme Court’s 1978 docket, Parker v. Flook (alarms limits to a catalytic conversion process not patent-eligible).