tells patent examiners

latest on software

By Eugenio Hansen, OFS – Own work, CC0, https://commons.wikimedia.org/w/index.php?curid=18782923

The US Patent Office is working hard to keep up with developments in the federal courts concerning software-related patents.

On November 2, Robert Bahr, the Deputy Commissioner for Patent Examination Policy, sent out a memo entitled "Recent Subject Matter Eligibility Decisions."

The memo covers recent decisions including McRO and Bascom, which we’ve blogged about previously. Just the day before the memo came out, the Federal Circuit issued another precedential decision in the Amdocs case, and Bahr said that would be discussed in a forthcoming update to the USPTO’s SME guidance.

Bahr listed the following among the "notable points" from McRO:

Examiners should consider the claim as a whole under Step 2A of the USPTO’s SME guidance, and should not overgeneralize the claim or simplify it into its "gist" or core principles, when identifying a concept as a judicial exception. …

An "improvement in computer-related technology" is not limited to improvements in the operation of a computer or a computer network per se, but may also be claimed as a set of "rules" (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not previously performable by a computer.

And Bahr included the following among the notable points from Bascom:

…examiners should consider the additional elements in combination, as well as individually, when determining whether a claim as a whole amounts to significantly more, as this may be found in the non-conventional and non-generic arrangement of known, conventional elements.

Bahr also discussed the issue of preemption:

If applicant argues that a claim does not preempt all applications of the exception, an examiner should reconsider in Step 2A of the eligibility analysis whether the claim is directed to an improvement in computer-related technology or a specific way of achieving a desired outcome or end result…

Finally, Bahr warned patent examiners not to rely on or cite non-precedential decisions of the Federal Circuit, “unless the facts of the application under examination uniquely match the facts at issue in the non-precedential decision.”

By narrowing the scope of which decisions can be considered by examiners, the Patent Office may bring increased focus to the still-amorphous standards for software patents.

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