USPTO Issues Memorandum to Patent Examiners on Software Patent Eligibility Cases

  • Nov 4 2016
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  • Category: News

How should patent examiners apply the Federal Circuit Court decisions in McRo and Bascam?

As we have previously written, a string of Federal Circuit Court cases have established a complicated framework with respect to the eligibility of software patent claims. The effect of these rulings is that practitioners must strive to include “meaningful limitations” on any claimed process when drafting such claims. It is equally important to provide context for software claims, describe prior art methodologies and draw distinctions between the claimed process and the prior art.

On November 2, 2016, the United States Patent and Trademark Office issued a memorandum to patent examiners that provides them with guidance on how to apply the decisions in McRo, Inc. v. Bandai Namco Games America, and BASCOM Global Internet Services v. AT&T Mobility. The memorandum from Robert Bahr, Deputy Commissioner of Patent Examination Policy, is part of an ongoing effort to provide examiners with eligibility guidance on software patent claims.

USPTO Guidance on McRo

The guidance regarding McRo instructs examiners to “consider the claim as a whole under Step 2A of the USPTO’s SME Guidance.” In short, a claim must neither be over generalized or simplified to its core principles.  Moreover, a claim of an improvement in computer-related technology may be based on the mathematical relationships that enable a computer to perform a new function.

Such a claim may also include:

  • A teaching in the specification about how the claimed invention improves a computer or other technology
  • A particular solution to a problem, or a particular way to achieve a desired outcome defined by the claimed invention, as opposed to merely claiming the idea of a solution or outcome

Guidance on BASCOM

The memorandum concerning BASCOM clarifies how Step 2B of the SME guidance is to be applied. In sum, additional elements must be considered both in combination and individually to determine “whether a claim amounts to significantly more.”

The Takeaway

The memorandum is designed to address the Federal Circuit’s reliance on non-precedential decisions in software patent eligibility determinations, and cautions examiners not to rely or cite these decisions unless the facts of the claim uniquely match those at issue in these cases.

Lastly, the memorandum also instructed examiners to continue to rely on the Mayo/Alice framework when deciding issues of preemption, and that lack of preemption may not necessarily confirm patent eligibility. The USPTO also intends to issue further guidance in this regard.

In sum, the memorandum notes that the decisions do not change “the basic subject matter eligibility framework explained in the SME guidance” which will be updated in the fullness of time to reflect these decisions and “feedback from patent stakeho