Friday, November 4, 2016

USPTO - Memo on Recent Subject Matter Eligibility Decisions - November 2, 2016

The USPTO published a memo Recent Subject Matter Eligibility Decisions that seeks to clarify the Federal Circuit's recent decisions on patent eligibility of software-related inventions.

As stated in the USPTO memo:

"The U.S. Court of Appeals for the Federal Circuit (Federal Circuit) has issued a number of subject matter eligibility decisions since the May 2016 Update to the USPTO's subject matter eligibility (SME) guidance. These decisions do not change the basic subject matter eligibility framework explained in the SME guidance and training examples, but provide additional information about finding eligibility for software claims. Accordingly, the USPTO will be updating its SME guidance in view of these decisions and feedback from patent stakeholders.

This memorandum provides a discussion of two of the recent decisions identifying eligible subject matter, namely McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016) and BASCOM Global Internet Services v. AT&TMobility LLC, 827 F .3d 1341 (Fed. Cir. 2016). Yesterday, the Federal Circuit issued another precedential decision finding eligibility Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 2015-1180 (Fed. Cir. Nov. 1, 2016)), which will be discussed further in the forthcoming update to the SME guidance, along with McRO, BASCOM, and other recent decisions concerning patent eligibility. These decisions have also been added to the chart of court decisions available on the·USPTO's SME Webpage."

Thus it appears the Federal Circuit is formulating a more favorable patent eligibility test in 2016. However, 35 USC 101 has a broad definition of what is patent eligible subject matter. The Supreme Court has introduced a judicial abstract exception to this broad statutory language, but has not clearly defined it. Until we get clarification from the Supreme Court and/or Federal Circuit or a legislative fix I expect to see this issue to be "decided" case by case.

Copyright © 2016 Robert Moll. All rights reserved.