Earlier today the United States Patent and Trademark Office (USPTO) sent a memo to the Examining Corps with information and instructions relating to the recent ruling in Enfish, LLC v. Microsoft Corp. by the United States Court of Appeals by the Federal Circuit. In Enfish the Federal Circuit ruled that the software patent claims at issue were not abstract and were patent eligible.
The memo, authored by Robert Bahr, who is Deputy Commissioner for Patent Examination Policy, accurately explains the importance of the Federal Circuit ruling in Enfish. Bahr tells examiners that based on the Federal Circuit ruling they “may determine that a claim direct to improvements in computer-related technology is not direct to an abstract idea under Step 2A of the subject matter eligibility examination guidelines (and is thus patent eligible), without the need to analyze the additional elements under Step 2B.” (emphasis in the original) Bahr goes on to tell examiners that a claim that is “directed to an improvement to computer-related technology (e.g., computer functionality) is likely not similar to claims that have been previously identified as abstract by the courts.” This is significant because the Federal Circuit explained that since the Supreme Court has never defined the term “abstract idea” the best one can do is compare claims to previous scenarios that have been decided to be either patent eligible or patent ineligible. Thus, the way to determine whether any particular claim is patent eligible is to subjectively determine whether the claim you are considering is more like a claim that has been previously determined to be abstract or it is more like a claim that has previously been determined not to be abstract.
In the memo Bahr also makes mention of the more recently decided TLI Communication LLC v. A.V. Automotive, LLC, which was decided by the Federal Circuit on May 17, 2016, and which found that the claims at issue were abstract and did not add substantially more, which made the claims patent ineligible. Bahr explained that the Federal Circuit found that performing the steps of “using a telephone unit and a server did not add significantly more to the abstract idea because they were well-understood, routine, conventional activities.”
Bahr concluded the USPTO memo as follows:
In summary, when performing an analysis of whether a claim is direct to an abstract idea (Step 2A), examiners are to continue to determine if the claim recites (i.e., sets forth or describes) a concept that is similar to concepts previously found abstract by the courts. The fact that a claim is directed to an improvement in computer-related technology can demonstrate that the claim does not recite a concept to previously identified abstract ideas.”
It is also noteworthy that previously in the memo Bahr specifically cautioned examiners “against describing a claim at a high level of abstraction untethered from the language for the claim when determining the focus of the claimed invention.” If nothing comes from this memo other than a modicum of revision in how examiners characterize the abstraction they claim they see the memo will lead to an increase in the allowance rate. Not being naive, I’m not going to hold my breath, but I am hopeful.
While the Enfish decision and this memo should be helpful in many respects to patent applicants seeking patent claims on computer related innovations, I unfortunately expect many recalcitrant examiners will simply choose to ignore the Enfish decision and selectively read this memo in extraordinarily strained ways. I have no doubt that the senior level career managers at the Patent Office would like patent examiners to issue patents when they are deserved, but it seems that there are many examiners in the software technology space that simply do not issue patents and seek any excuse to deny applicants. For the examiners I doubt this memo will have any impact. I hope I’m wrong, but we have seen this play out many times before, getting excited by positive pro-patent instructions by management to examiners only to see little, or nothing, actually change.
Early in the memo Bahr explains, as does the Federal Circuit, that an improvement will likely mean that the claim is patent eligible, but then unfortunately concludes only that an improvement “can demonstrate” that the claim is not the same as “previously identified abstract ideas.” I expect examiners to focus on second part of the memo (which sound permissive) rather than the earlier part of the memo (which sounds more mandatory). I also expect they will point to the TLI Communications decision as meaning that the Enfish decision was nothing more than a blip on the radar in the same way that DDR Holdings was a blip on the radar screen. We will have to wait and see.
There will be many more battles to be fought and many more chapters to be written before the Federal Circuit and Supreme Court comes to the undeniable realization that we have a completely subjective test that is intentionally biased to find that software patent claims are patent ineligible.