Changes to Examination of Software and Algorithm Patents in the US

Algorithm code on a screenMarkus Spiske on Unsplash

On 7 January 2019, the U.S. Patent and Trade Mark Office (USPTO) issued revised guidelines in relation to how software and algorithm patents should be examined.

The USPTO’s previous approach to examining computer implemented inventions

Recently, it has become common for patents involving computer implemented inventions such as software and algorithm inventions to attract an objection during examination that the invention does not involve patent eligible subject matter under 35 U.S.C. § 101.  This objection is typically raised if the patent claims are directed to what is referred to as a “judicial exception”, which typically means an abstract idea such as an algorithm or some mathematical or statistical concept implemented in a computer environment.

In an approach commonly referred to as the “2 step test” (derived from the U.S. Supreme Court’s decisions in Alice Corporation Proprietary Ltd. v. CLS Bank International and Mayo Collaborative Services. v.Prometheus Labs), in a first step a patent examiner will ask if the invention is directed to a judicial exception (e.g. an abstract idea such as an algorithm or some mathematical or statistical concept).  If the answer is yes then the examiner will enquire as to whether the claim contains an “inventive concept” sufficient to transform the claimed judicial exception into a patent-eligible application.

In assessing whether an invention involves an inventive concept sufficient to transform the claimed judicial exception into a patent-eligible application, the examiner would consider whether the non-abstract features of the invention embody an inventive concept or whether they merely involve “well understood, routine and conventional” activities and that the inventive concept, if there is one, resides only in the judicial exception, namely the algorithm or mathematical or statistical method per se.

It is in relation to this last point that many computer implemented software and algorithm patents have come unstuck.  A typical reason is the Examiner concludes that the tangible technical features of the invention are well known and conventional and therefore cannot contribute to the “inventive concept”.   Consider, for example, an invention relating to a novel application of an algorithm or a mathematical method for use in obtaining and extracting data from electrical sensors, say for measuring a biometric variable or an electrical property of a sensor in a motor vehicle engine.  It has been common for the examiner to conclude that the sensor and computer architecture of the invention is “well understood, routine and conventional” and that the inventive concept resides only in the judicial exception, namely the algorithm or the mathematical or statistical method, and as such the invention is deemed not to be eligible for a patent by the USPTO.

The USPTO’s revised examination guidelines for computer implemented inventions

Under the USPTO’s revised examination guidelines, there is an entirely new subject-matter eligibility test related to whether a claim recites a practical application of the abstract idea.

The revised guidelines explain that a claim is not directed to a judicial exception (i.e. the claim is not abstract) if the claim recites additional elements that, when taken as a whole, integrate the judicial exception into a practical application of the judicial exception.  The revised guidelines explicitly provide that it is not appropriate to enquire at this point if the additional elements represent “well-understood, routine and conventional” activity.  As such, the guidelines significantly restrict the circumstances in which an objection may be taken based on a conclusion that claimed features may be “well understood, routine and conventional”.

The guidance provides some useful guidelines to determine if a claim satisfies this new approach, including asking whether the invention:

  • reflects an improvement in the functioning of a computer or an improvement to other technology or technical field?
  • applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition?
  • implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
  • effects a transformation or reduction of a particular article to a different state or thing; or
  • uses a judicial exception in some meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.

It is yet to be seen how the revised guidelines will be implemented in practice. However, it should be much easier to overcome existing objections to computer implemented inventions for lack of patent eligible subject matter under 35 U.S.C. § 101, particularly if the invention is implemented in a technical environment such as in a medical device, a sensor or some kind of machine or industrial application.  Also, moving forward, it is likely that as long as a patent claim recites sufficient features of technical implementation then it will be less likely that objections for lack of patent eligible subject matter will be raised by U.S. examiners in the future.

If you have any questions about prosecuting patent applications in the U.S. or how the revised examination guidelines will impact on your existing U.S. patent applications then please contact Daniel McKinley

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