The USPTO unofficially gives new guidance to an approach to 35 U.S.C. 101 "usefulness" patentability determination for software patents. In commenting on a recent Federal Circuit court decision regarding 101 (usefulness) patentability for software inventions, the USPTO in a blog post stated that patentability criteria regarding prior art (102 novelty and 103 obviousness) might be addressed first, before section 101 comes into play. Specifically, the USPTO and the Federal Circuit noted that 102 and 103 (along with 112 definiteness and enablement) typically do the lion's share of work in disqualifying inventions that are not worthy of a patent, and that section 101 need not be addressed first. Rather, that determinations of validity/patentability may be more streamlined by addressing the 102, 103 and 112 criteria before turning to the 101 inquiry. Software related inventions have been controversial under 101 criteria, and other recent Federal Circuit court decisions have been harsh on patentability for this type of invention. The USPTO hinted that applications meeting 102, 103 and 112 requirements would not likely receive 101 rejections. Should the USPTO adopt this order of examination in practice, perhaps we will see fewer 101 rejections and focus on overcoming prior art based rejections instead for this type of invention. This could be a step towards lessening the 101 focus during examination. For the full post see:
The recent Federal Circuit decision CLS Bank International v. Alice Corporation raises some important points that offer insight on advancing prosecution of patent applications. In CLS Bank, the claims to a computer-implemented invention were found to fall within an eligible category of invention and not to mere abstract ideas. In answering the question of eligibility under § 101, I found it interesting that the court looked at the different roles of the various statutory provisions, § 101, 102, 103, and 112. Sections 102, 103 and 112 do the substantive work of disqualifying those patent eligible inventions that are “not worthy of a patent”, while § 101 is a general statement of the type of subject matter eligible for patenting. The court notes that, while § 101 has been characterized as a threshold test and certainly can be addressed before other matters touching on patent validity, it need not always be addressed first, particularly when other sections mi ght be discerned by a trial judge as having the promise to resolve a dispute more expeditiously or with more clarity or predictability. The court in CLS Bank also recognized that the exceptions to eligibility—laws of nature, natural phenomenon, and abstract ideas—should arise infrequently.
Based on my experience, I appreciate the wisdom of the court’s discussion relating to resolving disputed claims by focusing initially on patentability requirements of § 102, 103, and 112, rather than § 101. I have found that when claims are refined to distinguish over the prior art, recite definite boundaries, and be fully enabled based on a complete written description, they do not usually encounter issues of eligibility based on reciting mere abstract ideas or broad fundamental concepts. Put another way, every business looks for opportunities to sequence workflow so that the first issues addressed are the ones that can simplify or completely resolve other issues. This is good basic management for businesses, and for patent offices.
While courts can resolve patent disputes in the most expeditious manner given the facts of the case, the Office has the unique duty of ensuring that all patentability requirements are met before issuing a patent. Applications that are presented in the best possible condition for examination with clear and definite claims that are believed to distinguish over the prior art and are supported by a robust disclosure will most likely not encounter rejections based on eligibility. Avoiding issues under § 101 can have a very positive effect on pendency and help examiners focus on finding the closest prior art, leading to strong patent protection. Hopefully, the guidance supplied by the Federal Circuit in CLS Bank can help us as we continue to work on reducing pendency and enhancing quality of issued patents.