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Software is Patent-Eligible, But it's All About the Claims

By Procopio Associate Eric A. Bernsen

Apps, computer- or smartphone-enabled processes, smart devices, and IoT solutions, often center on the same core element: software. Is your software, app, or process patentable?  Well, to provide the stereotypical lawyer answer, it depends. But, at least in the near term, it seems easier now than it was before January 2019.

The definition of patent-eligible subject matter is codified in 35 U.S.C. § 101:

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.”

Several court decisions have created a number of judicial exceptions to this, including products of nature, natural/physical laws, natural phenomena, mental processes, and the infamous “abstract ideas.” The courts have also tortured the concept of the “abstract idea,” as judges and justices have been reticent to ascribe any concrete definition to the term. 

The Alice/Mayo Test, stemming from the patent lawsuits by the same name in 2014 and 2012, respectively, and the periodic U.S. Patent and Trademark Office (USPTO) interim examination guidance provided much needed direction for patent practitioners. For the last several years, the Alice/Mayo Test has forced patent practitioners to analogize their respective patent claims to a cross section of cases concerning claims that the courts interpreted as decidedly “not abstract.” Examiners, on the other hand, would generally attempt to do the opposite, instead placing the pending claims in the “abstract” box, according to court cases that found the associated claims “abstract.” 

In the meantime, success on the part of the applicant has depended on the skill and persistence of the practitioner, persistence and training of the examiner, and how much money the applicant was willing to spend, but less on the perceived novelty (and nonobviousness) of the invention.  As more and more patent claims made their way through the USPTO, this situation led to inconsistent results and increased uncertainty.

The recent “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 Guidance) noted the same, stating that “properly applying the Alice/Mayo test in a consistent manner has proven to be difficult.” This is due at least in part because there is/was no universally accepted definition of what an “abstract idea” is and interpretation of claim terms and claim structure was inconsistent from examiner to examiner. 

USPTO Director Andrei Iancu’s January issuance of the 2019 Guidance makes some big strides in terms of lending more consistency to the concept of an “abstract idea,” and provides a more definite, albeit more convoluted, test to determine patent eligibility.  Practitioners and applicants alike can now rest a little easier knowing claims that are “integrated into a practical application” are more likely to survive examination under § 101.

Step 1 (of the Alice/Mayo Test) asks if a claim is a “process, machine, manufacture, or composition of matter,” according to § 101, quoted above. If so, Step 2A follows.  Previously, Step 2A required practitioners to determine whether the claim is “directed to a law of nature, natural phenomenon or an abstract idea.” Classification as abstract then hinged on whether the claim fit within the rubric of judicially-defined patent-eligible claims and if the practitioner could successfully analogize the claims to one of the “patent-eligible” cases.  If not, the claim was “directed to” an abstract idea. The 2019 Guidance takes the analysis a bit further and breaks Step 2A of the Alice/Mayo Test into two helpful prongs.

Prong one asks whether the claim in question recites a judicial exception: a law of nature, natural phenomenon, or subject matter within the enumerated groupings of abstract ideas.  These “enumerated groupings” include 1) mathematical concepts, 2) certain methods of organizing human activity (e.g., online auctions), and 3) mental processes.  While the definitions of each grouping remain somewhat vague, the possible categories are few.  Claims that do not recite a judicial exception or do not fall into the enumerated groupings are patent-eligible.  There is one notable exception, in which a Technical Center Director can approve the rejection of a claim limitation that “does not fall within the enumerated abstract ideas [but], is nonetheless treated as reciting an abstract idea.”

Prong two is used for claims that do recite a law of nature, natural phenomenon, or can be captured in the three enumerated groupings.  But (and this is where the proverbial rubber meets the road), if the claim “recites additional elements that integrate the exception into a practical application of that exception,” then the claim is patent-eligible.  Of course, the 2019 Guidance adds further granularity, noting that to integrate the judicial exception into a “practical application,” the claim must “apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception.” This new guidance apparently opens the patent-door for claims considered more than “a drafting effort designed to monopolize the judicial exception”; or claims that may have previously been consigned to the abstract realm. 

So at least for now, practitioners have some more solid ground to stand on. The 2019 Guidance generally eliminates the automatic notion that the presence of an abstract idea in a claim relegates the claim to the ineligible subject matter category. 

But of course, the opposite is true: a claim that recites a judicial exception, but is not integrated into a practical application, is directed to the judicial exception under Step 2A and must then be evaluated under Step 2B (inventive concept) of the Alice/Mayo test, as before. 

The period for public comment on the 2019 Guidance closed on March 8, 2019, so begins the waiting to see what happens next.  Stay tuned, and we will keep you informed.


Eric A. Bernsen is an Associate at Procopio and a member of its Intellectual Property team. He handles the preparation and prosecution of domestic and international applications for a wide variety of technologies. Eric’s practice focuses on electronics, semiconductors, software, computer networks, communications, wireless power, video coding, and gas turbine engine technology. He also has a broad range of experience in prosecution of applications for technologies involving, medical devices, radar, mechanical engineering, and aerodynamics.  Eric manages significant domestic and international intellectual property portfolios for several small and large companies.