Posts Tagged: "McRo"

Putting Words in the Mouth of McRO: The PTO Memorandum of November 2, 2016

The USPTO Memorandum of November 2, 2016 as to Recent Subject Matter Eligibility Decisions (“USPTO Memo”) inappropriately attributes the phrase “computer-related technology” to McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016). The phrase “computer-related technology” does not appear in McRO or even in Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014); rather, it appears in Enfish, LLC, v. Microsoft Corp., 822 F.3d 1327 (Fed Cir. 2016) and only after Enfish appropriately cites Alice.

A Guide to Software Patent Eligibility at the Federal Circuit

The Alice/Mayo framework is the decisional approach adopted by the United States Supreme Court for determining whether a patent claim exhibits, such as software patent claims, embody patent eligible subject matter… Over the last six months the Federal Circuit has provided a great deal of clarity, with 9 judges (Judges Moore, Taranto, Hughes, Chen, Newman, O’Malley, Reyna, Stoll, and Plager) signing on to decisions that found software patent claims to be patent eligible. What follows is a a summary of the significant developments over the last six months.

How to Patent Software in a Post Alice Era

In a nutshell, if you are going to write a patent application in such a way that at the end of the it the reader is left wondering what the innovation is, what the problem being solved is, or the technical particulars on how the innovation actually solves the problem, you should not expect a patent. In other words, if you write your patent applications without actually defining the technological solution and how it is implementing the desired functionality you describe, and how that is an improvement, you will not get a patent because the claims will be patent ineligible. On the other hand, if you write your patent applications to describe (and claim) an invention that is adequately described so that someone of skill in the art will understand what is innovative (i.e., how and why), thick with technical disclosure and explanation as to how computer functionality is being improved, or even generic components are working in unconventional ways, then you will get a patent because your claims will be patent eligible.

USPTO issues new memorandum on software eligibility in light of McRo, BASCOM

Earlier today the United States Patent and Trademark Office issued a new memorandum to patent examiners on recent software patent eligibility decisions from the Federal Circuit. The memo sent to the patent examining corps from Robert Bahr, who is Deputy Commissioner for Patent Examination Policy, explains that this most recent memorandum provides examiners with discussion of McRo, Inc. v. Bandai Namco Games America and BASCOM Global Internet Services v. AT&T Mobility.

More software patent eligible, Federal Circuit says lip synchronization not abstract

It is hard to ignore the fact that the Federal Circuit again continued to point out that the innovation at issued was an improvement. This should give patent practitioners important clues into how to characterize software related innovations so as to maximize the likelihood of prevailing in Alice inspired challenges and rejections. Hopefully the United States Patent and Trademark Office will not ignore McRo and will issue guidance to patent examiners. Taking a “nothing to see here” approach to this case would be inexcusable.