Earlier today the United States Patent and Trademark Office released the promised patent eligible subject matter examples, which together with the recently released guidance will give applicants, patent prosecutors and patent examiners more information about how the USPTO interprets the state of the law in this all important area.

The USPTO guidance with respect to biotechnology has been much further along than its guidance with respect to computer implemented inventions, owing to the agency having had since the Supreme Court decided Mayo and Myriad in 2012 and 2013, respectively, to work on biotech guidance. Today marks the first time that the USPTO has released hypothetical examples relating to abstract ideas.

“We understand that examples are helpful, and we are going to continue to work on additional examples,” explained Drew Hirshfeld, Deputy Commissioner for Patent Examination Policy, in a telephone interview. “We are hoping people will comment on these examples during the open comment period. That would be helpful.”

Hirchfeld is referring to the open comment period where the public has been asked to provide feedback on the Interim Eligibility Guidance. To be ensured of consideration, written comments must be received on or before March 16, 2015. Comments should be sent by electronic mail message to: 2014_interim_ guidance@uspto.gov.

The guidance provided includes 8 different scenarios, 4 of which demonstrate patent eligible subject matter and 4 of which demonstrate patent ineligible subject matter. In one of the hypotheticals provided, the USPTO gives an example of patent eligible claims directed to both a computer implemented method and a computer readable medium. “This hypothetical is to show that not all software is an abstract idea,” Hirshfeld explained.

[Varsity-1]

The Mayo Framework

Taking a step back for a minute, it is helpful to recall that in order to make sense of Supreme Court’s patent eligibility analysis, the so-called “Mayo framework,” the USPTO broke the decision making process into three steps. In the first step the USPTO instructed patent examiners to determine whether the claim is directed to a process, machine, manufacture or composition of matter. If the answer is NO, then the claim is not eligible subject matter. If the claim is directed to a statutory category of invention examiners are instructed to proceed to the next step, which is the first step of the two-part Mayo framework as announced by the Supreme Court.

If the claim is directed to a statutory category of invention the first Mayo inquiry requires determination of whether the claim is directed to a law of nature, natural phenomenon, or an abstract idea, which are collectively referred to as “judicial exceptions” to patent eligibility. The importance of the first two USPTO hypotheticals should not be apparent. The USPTO is informing applicants and examiners alike that it is possible to draft a claim to cover a software innovation that is NOT directed to an abstract idea. If a claim is not directed to an abstract idea, or other judicial exception to patent eligibility, the claim is patent eligible and the patent examiner should not proceed to the second prong of the Mayo two-step analysis.

The Hypotheticals

Hypothetical 1 provides an example technology that relates to software that isolates and removes malicious code from electronic messages. The USPTO provides basic background information about the technology, two independent claims, and analysis. The crux of the USPTO analysis and explanation why these claims are patent eligible is as follows:

The claim is directed towards physically isolating a received communication on a memory sector and extracting malicious code from that communication to create a sanitized communication in a new data file. Such action does not describe an abstract concept, or a concept similar to those found by the courts to be abstract, such as a fundamental economic practice, a method of organizing human activity, an idea itself (standing alone), or a mathematical relationship. In contrast, the invention claimed here is directed towards performing isolation and eradication of computer viruses, worms, and other malicious code, a concept inextricably tied to computer technology and distinct from the types of concepts found by the courts to be abstract. Accordingly, the claimed steps do not recite an abstract idea. Nor do they implicate any other judicial exception. Accordingly, the claim is not directed to any judicial exception (Step 2A: NO). The claim is eligible.

Hypothetical 2 is based on the DDR Holdings case, not surprisingly adopting the same reasoning of the Federal Circuit, explaining:

The claim does not recite a mathematical algorithm; nor does it recite a fundamental economic or longstanding commercial practice. The claim addresses a business challenge (retaining website visitors) that is particular to the Internet. The claimed invention differs from other claims found by the courts to recite abstract ideas in that it does not “merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” No idea similar to those previously found by the courts to be abstract has been identified in the claim.

The hypothetical also specifically instructs examiners that if no abstract idea is identified “the claim should be deemed to be not directed to a judicial exception. The claim is eligible.” However, because the Federal Circuit also provided analysis under the second prong of the Mayo framework the USPTO likewise provided analysis as well.

Hypothetical 3 is based on Research Corporation Technologies v. Microsoft. The claims in this hypothetical were deemed to be directed to an abstract idea because the claims cover the mathematical operation of generating a blue noise mask. Notwithstanding, the claims are patent eligible because the claim recites additional elements that amount to “significantly more” than an abstract idea. The hypothetical explains:

[T]he steps recited in addition to the blue noise mask improve the functioning of the claimed computer itself… the claimed process with the improved blue noise mask allows the computer to use to less memory than required for prior masks, results in faster computation time without sacrificing the quality of the resulting image as occurred in prior processes, and produces an improved digital image.

The point of this hypothetical is to demonstrate that the “significantly more” prong of the inquiry can be satisfied by improvements to the functioning of a computer, for example, and that those improvements can be embodied in software. More specifically, when the terminology “improvements to the functioning of a computer” are used many might be lead to incorrectly believe those improvements must be tangible, or hardware based. It is possible, as hypothetical 3 demonstrates, to have “significantly more” when the improvement is based in software. “Software can improve the functioning of a computer and be significantly more,” explained Hirshfeld. “It would satisfy the significantly more prong if it improves the functioning of the computer itself.”

Hypothetical 4 is based on SiRF Technology Inc. v. International Trade Commission. Again, this hypothetical provides an example of claims that are determined to be directed to an abstract idea, but which are still nevertheless patent eligible. The claims contain additional elements that amount to significantly more than the abstract idea because they show an improvement to another technology or field.

With respect to hypothetical 4, the USPTO explains that “computer components are recited at a high level of generality and add no more to the claimed invention than the components that perform basic mathematical calculation functions routinely provided by a general purpose computer.” This, of course, without more is not sufficient to satisfy the patent eligibility test. The USPTO, however, explains:

[T]he claim is further limited to a mobile device comprising a GPS receiver, microprocessor, wireless communication transceiver and a display that receives satellite data, calculates pseudo-ranges, wirelessly transmits the calculated pseudo-ranges to the server, receives location data from the server, and displays a visual representation of the received calculated absolute position from the server. The programmed CPU acts in concert with the recited features of the mobile device to enable the mobile device to determine and display its absolute position through interaction with a remote server and multiple remote satellites. The meaningful limitations placed upon the application of the claimed mathematical operations show that the claim is not directed to performing mathematical operations on a computer alone. Rather, the combination of elements impose meaningful limits in that the mathematical operations are applied to improve an existing technology (global positioning) by improving the signal-acquisition sensitivity of the receiver to extend the usefulness of the technology into weak-signal environments and providing the location information for display on the mobile device. All of these features, especially when viewed in combination, amount to significantly more than the judicial exception.

This 4th hypothetical is quite important. In many situations software claims have contained only very generalized recitation of computer components because the computer components themselves are not what will make the invention unique. What will make the invention unique in the software space are the processes that run on the computer components. In this example we learn that generalized recitation of computer components is not the death knell of software claims provided that they impose meaningful limitations on operations to improve existing technology. That means that the operations cannot merely occur on a generalized computer alone, but the claims must also incorporate specific reference to an integral existing technology.

Part Two of the hypothetical examples contains 4 examples where the claims would not be patent eligible. These hypotheticals are based on (1) Digitech Image Tec v. Electronics for Imaging; (2) Planet Bingo v. VKGS; (3) buySAFE v. Google; and (4) Ultramercial v. Hulu and WildTangent. By far, the most interesting of these is the last, relating to Ultramercial, which to me simply cannot be reconciled with the Federal Circuit’s holding in DDR Holdings.

In Ultramercial the invention related to a method for addressing problems associated with piracy of digital copyrighted media. The invention was directed to distributing products covered by copyright over a telecommunications network by allowing a consumer to choose to view or interact with a sponsor’s message in exchange for access to copyrighted material. In DDR Holdings the Federal Circuit explained that the invention had no real world analog and was only possible because of the Internet, which dramatically influenced the panel’s decision. Similarly, in Ultramercial, the invention cannot exist outside of an Internet environment, and the preamble to claim 1 even specifically limited the scope of the claim to “distribution of products over the Internet…”

The USPTO explains that the claims in Ultramercial do not satisfy the significantly more prong of the Mayo framework. The hypothetical concludes:

Viewing the limitations as a combination, the claim simply instructs the practitioner to implement the concept of using advertising as an exchange or currency with routine, conventional activity specified at a high level of generality in a particular technological environment. When viewed either as individual limitations or as an ordered combination, the claim as a whole does not add significantly more to the abstract idea of using advertising as an exchange or currency (Step 2B: NO). The claim is not patent eligible.

Conclusion

The examples provided by the USPTO should be extremely helpful to everyone involved in the prosecution of software patent applications. The hope is that patent examiners will start to follow the guidelines and implement these hypotheticals. Examiners are still being trained on the guidance, which is why the USPTO says that some examiners are not applying the guidelines as they are directed to do so. Those familiar with the industry know that the problem runs significantly deeper. Senior management at the USPTO is not the problem. Over the past 6 years the USPTO has continually disseminated even-handed guidance that provide examples of what is and should be patentable. In many instances there are examiners who simply refuse to follow instructions. In at least some instances those examiners take great pride in the fact that they refuse to follow instructions, telling patent attorneys that they have no intention of following guidance. Time will tell whether the USPTO can get examiners on the same philosophical page.