Controversy Continues Over Patentability of Software Inventions

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: