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  • Writer's pictureDavid Sterrett

Federal Circuit Decisions Bring New Hope to Software Patentability

The June 19, 2014 Supreme Court decision Alice vs CLS Bank raised the question of whether or not software patent claims are patent eligible. Happily, it also confirmed the ‘Mayo framework’ a two-step analysis consisting of three questions as the way to determine patent eligibility.

  • Step 1 – Does the patent claim cover “a process, machine, article of manufacture, or composition of matter.” If the answer is yes, then step two is not necessary.

  • Step 2 A – Does the patent claim attempt to cover one of the three specifically identified judicial exceptions to patent eligibility: laws of nature, physical phenomena, abstract ideas. If the answer is yes, then step 2B is necessary.

  • Step 2B – If the patent claim seeks to cover a judicial exception, does the ‘inventive concept add significantly more than the judicial exception’.

Unhappily the Supreme Court was unclear in defining both “abstract idea” and “significantly more”, leaving patent seekers scratching their heads and waiting for clarification.

During the past six months decisions by the Federal Circuit have helped clarify the process. Gene Quinn describes this in detail in his excellent posts, A Guide to Software Patent Eligibility at the Federal Circuit and How to Patent Software in a Post Alice Era on IPWatchdog. (

Two cases give an idea of the progress.

  • Enfish v. Microsoft – focusing on the first step the court asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. And decided that: “In this case, however, the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.” This differentiation made it patent eligible under step one and step two was not necessary.

(So, in Step One it can be determined: “whether the claims are directed to an improvement to computer functionality - which is patent eligible - versus being directed to an abstract idea, which then requires step 2 analysis.”)

  • Amdocs(Israel) Limited v. Openet Telecom, Inc. (November 1, 2016)

The decision held that claims are not directed to an abstract idea when generic components are described in the claim to operate in unconventional ways to achieve an improvement in computer functionality.Or as John M. Rogitz explains in his November 2 IPWatchdog post, “Federal Circuit holds software claims to be patent-eligible because they recite a technological solution to a technological problem.”

These and other decisions covered in Quinn’s articles help inventors better understand how to write applications to overcome the patent eligibility threshold.

What does this mean for those seeking software patents? It’s key to familiarize yourself with the recent decisions to understand how to write an application that will prove your software is patent-eligible. Second, stay up-to-date regarding new decisions from the Federal Circuit on software patent eligibility.

One question we can’t yet answer is: what will a Trump Presidency mean for Intellectual Property and Patent Reform? More on that in the coming year!

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