The USPTO issued a new memo to patent examiners on the subject of software patent eligibility on 2 November 2016 following recent precedential decisions in McRo Inc v Bandai Namco Games America and BASCOM Global Internet Services v AT&T Mobility in the Federal Circuit. A further recent precedential, decision Amdocs (Israel) Ltd v Openet Telecom, will be the subject of a further memo. As always the USPTO has updated its subject matter eligibility page on its website.

By way of a quick reminder the USPTO assessment that evaluates whether a claim comprises patent eligible subject matter comprises a two step test:.

Step 1 determines whether the claim is directed to a process, machine, manufacture or composition of matter. If yes, the test proceeds to Step 2A which determines whether the claim is directed to a law of nature, natural phenomena or abstract ideas. If no, the test proceeds to Step 2B to analyse whether the claim as a whole is directed to significantly more than the exception.

The McRo case related to a computer implemented method of automatic lip synchronisation and facial expression examination. The method related to the use of specific computer-implemented rules rather than human artists to set certain features of the animation. Human artists did not use the claimed rules and relied on subjective determinations.

As a result the court held that the McRo invention was not an abstract idea as it related to the incorporation of particular claimed rules in computer animation and was distinguished from Alice where a computer merely was a tool for performing an existing process.

The McRo court cautioned courts against oversimplifying the claims. Within Step 2A above therefore courts should consider the claim as a whole and not try to reduce it to its “gist”

BASCOM related to a system for filtering content retrieved from an Internet computer network. The system comprised elements that were generic computer, network and Internet components when considered individually but the combination comprised a non-conventional and non-generic arrangement of additional elements.

Within Step 2B therefore courts should consider additional elements in combination as well as individually when determining if a claim as a whole amounts to significantly more.

Also noted in the present memo: the Office will be addressing the issue of preemption in more detail in a future update of its SME guidance; and, examiners should avoid relying upon or citing non-precedential decisions unless the facts of the case uniquely match the facts of the case in examination.

Mark Richardson 15 November 2016