By Matthew J. Booth
The US Patent & Trademark Office (USPTO) recently published an updated Examiner Guidance that applies to the examination of software patent applications (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50). The hope is that these new Guidelines will speed up the application review process and provide more predictability for the patenting of existing and new software inventions.
First a little background, in 2014 the US Supreme Court decided the Alice case. Alice redefined how software patents were analyzed by asking whether software patents were eligible for patent protection under 35 U.S.C 101. (See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217-18 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The aftermath of Alice has been, in my opinion, chaos because courts invalidated scores of issued software patents. Additionally, the USPTO started refusing to grant scores of patents on software related inventions. Since Congress never fixed “the Alice problem,” the courts began determining on a case-by-case basis (really a patent-by-patent basis) whether claims were eligible for patent protection. The USPTO tried to keep current with these cases by issuing guidance to the Examiners for how to examine software patent applications in light of the fallout from Alice but that offered little relief. I have seen articles over the past couple of years showing the statistics for the rejection rate of software patent applications post-Alice to be over 90% in some USPTO examination groups. This type of technological shutdown in the USPTO was completely unprecedented.
As I have worked on patent applications over the years, the challenge is to write claims for a software invention that will be patentable and enforceable. I have often relied on the technique of reviewing case law to look for cases with claims that met that criteria and then mimicking them in writing a new application. This was the first and foremost step in drafting the application and then the question of whether the invention was novel or nonobvious over prior patents actually came later. This often felt like putting the cart before the horse but it is where we found ourselves in the aftermath of Alice.
This is one of the reasons that Patent Owners and Applicants have been calling on the USPTO to address these examination problems and to come up with a process that will get software patent applications granted while maintaining enforceability. The new Director of the USPTO recognized the problem and promised a fix. That fix has finally come to pass with the issuance of new examination Guidelines.
Breaking the new Guidelines down, they are like a check list for Examiners to go through as they are analyzing software claims. For example, if the claims are written in a certain fashion, then they are subject-matter eligible and the analysis proceeds on to whether the claims are novel and nonobvious. The Examiner continues down the checklist looking at the next set of requirements. If the Examiner reaches the conclusion that the claims are not patent eligible, then a second review and approval by the Director of that particular Technology Group is required prior to issuing a rejection.
I have high hopes that this is at last the light at the end of the long dark post-Alice tunnel.