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The USPTO Gives New Life to Software-Related Patents

The USPTO has recently promulgated new guidance related to computer- and software-related patent applications. The new guidance changes how USPTO examiners are to determine patent eligibility of such applications.

Before, examiners were to follow a two-step analysis based on the Supreme Court's decision in Alice. Under the first step, examiners were to determine whether the claims of an application are directed to an abstract idea, natural phenomena, or law of nature (known as the "judicial exceptions"). Under the second step, the examiners were to determine whether the claims recite an "inventive step". This two-step analysis resulted in numerous rejections of computer- and software-related applications at the USPTO. 

The new guidance modifies the first step by splitting it into two prongs. Under the first prong, the examiner is to determine whether the claims "recite" a judicial exception falling into any of three categories enumerated by the USPTO guidance: (1) mathematical concepts, (2) methods of organizing human activity, or (3) mental processes. Under the second prong, the examiner is to determine whether the claims are "directed to" one of the enumerated categories. This involves evaluating whether the judicial exception is integrated into a practical application of the exception.

With the new guidance, the USPTO appears to be telegraphing a friendlier stance toward applications related to software and computers. First, the new guidance seems to remove some discretion from examiners regarding patent eligibility. The guidance requires examiners to pick only from an enumerated list of judicial exceptions. Only under "rare circumstances" can an examiner analyze the eligibility of subject matter outside of the list. While the prior practice of (probably) most examiners was to select from a list of exceptions already cited by court decisions, some examiners were more creative than others in characterizing claims as reciting an abstract idea. Thus, the new guidance gives examiners less discretion in raising patent eligibility issues.

Second, the new guidance seems to make it easier for applicants to overcome patent-eligibility issues. The guidance narrows the USPTO's definition of what it means for a claim to be "directed to" a judicial exception. For the judicial exception to be considered integrated into a practical application, the claim must impose "a meaningful limit" on the judicial exception so that it is more than "a drafting effort designed to monopolize the judicial exception". It seems that for a limitation to appear to be such a drafting effort, it would probably have to be fairly meaningless, vague, and/or broad. The guidance says that if a claim does have the meaningful limit, then it is patent eligible, bypassing the more stringent inventive-step analysis (the second step of Alice). Thus, the new guidance appears to make overcoming eligibility issues less difficult by amending claims to include such meaningful limits.

While the new guidance is helpful in providing clearer bounds of eligibility for applicants at the USPTO, it will probably not settle the controversy surrounding computer- and software-related patents. As the first and main filter for patent quality, the USPTO ought to have clear standards for applicants seeking patents. However, the USPTO is only one player. Judges in the federal court system are not obligated to follow the new guidance when deciding patent validity. There is a chance patents deemed eligible by the USPTO under the new guidance will be declared ineligible by courts.

In conclusion, all sides in the controversy should review their strategies in light of the guidance. Patentholders and applicants may decide to increase the number of filings at the USPTO while remaining prepared for continued scrutiny in court. Additionally, companies may begin to prepare for an increase in active computer- and software-related patents.

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