Patentability of Software Patents: An Update

As we approach the two year anniversary landmark ruling in Alice v CLS Bank by the US Supreme Court, this article reviews the response made by the United States Patent and Trademark Office (USPTO) and discusses how successful practitioners are overcoming this new hurdle.

In 2014, the Supreme Court  of the United States decision in Alice v CLS Bank (Alice), 573 U.S. ___, 134 S. Ct 2347 (2014) has had a major impact on how computer science and business methods patents would be prosecuted.  In summary, the Court in Alice addressed whether software and business methods were even to be considered patentable subject matter if the patent applications claimed mere “abstract ideas.”   Unfortunately, the Court did not provide bright line tests for determining whether a claim is directed to an abstract idea.

The initial reaction caused great concern.  If the Court’s decision were broadly interpreted, many major high-tech companies that invested billions of dollars into software development were thought to be at risk.    But the directors at the US Patent and Trademark publically suggested in early 2015 that they did not intend to view Alice too broadly and intended to train their patent examiners accordingly.

As we approach the two year anniversary of Alice, we have seen several changes in the prosecution of some patent applications.  First, many of the patent Examiners do not appear to understand the nuanced tests and analysis presented in Alice.  Most US patent examiners are not attorneys, and the training materials appear to have not sufficiently trained the patent examiners.   In our own practice, we have seen rejection of claims as being abstract ideas without the examiner’s applying the tests outlined in Alice.

Second, many examiners appear to assume that Alice represents a blanket rejection of patent applications involving software.    Too often, the reasons for rejection are conclusory and without analysis.   Many office action rejections begin with generic statements copied from training materials, and are followed by a statement that reads something like “Therefore, the claims are directed to unpatentable subject matter because [fill in the blank] is merely an abstract idea.”

Third, once the claims are rejected under Alice, the examiners all-too-often reject claims under other statutes without thorough consideration.   One gets the sense that the examiners may think that if they kill the application easily with a mere mention of Alice, why take to time to clearly explain why the claims fail under other statutes?

However, patent applications involving software continue to be issued when the patent practitioner addresses these challenges appropriately.   Practitioners must draft patent applications carefully, understanding that examiner training materials may change and that congress could step in and address these issues through legislation.   Replies to office actions should be particularly thorough with parallel arguments presented on several levels that are persuasive to careful examiners as well as to attorneys working at the patent office.  For important applications where the examiners are not following the guidance in Alice, practitioners may wish to file an appeal earlier in the process in order for the arguments to be considered by other parties at the patent office.

This article is not meant to provide legal advice, but rather to inform.  For legal advice, please seek the advice of legal counsel who fully understands your circumstances.