USPTO issues new software patent guidelines–making it a little easier to get them to issue!

On November 2, 2016 the USPTO issued new software patentability guidelines in the wake of two cases: McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016) and BASCOM Global Internet Services v. AT&TMobility LLC, 827 F .3d 1341 (Fed. Cir. 2016). The USPTO appears to be making it slightly easier to get software patents to issue! The guidelines can be found here


With respect to McRO, the USPTO stated the following:

“Examiners should consider the claim as a whole under Step 2A of the USPTO’s SME guidance, and should not overgeneralize the claim or simplify it into its “gist” or core principles, when identifying a concept as a judicial exception. See also the discussion of identifying an abstract idea in the May 4, 2016 Memorandum (in Section II.A) and the discussion of claims directed to improvements in computer-related technology in the May 19, 2016 Memorandum about Enfish, which is available on the USPTO’s SME Webpage.

“An “improvement in computer-related technology” is not limited to improvements in the operation of a computer or a computer network per se, but may also be claimed as a set of “rules” (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not previously performable by a computer. An indication that a claim is directed to an improvement in computer-related technology may include

(1) a teaching in the specification about how the claimed invention improves a computer or other technology (e.g., the McRO court relied on the specification’s explanation of how the claimed rules enabled the automation of specific animation tasks that previously could not be automated when determining that the claims were directed to improvements in computer animation instead of an abstract idea). In contrast, the court in Affinity Labs ofTX v. DirecTVrelied on the specification’s failure to provide details regarding the manner in which the invention accomplished the alleged improvement when holding the claimed methods of delivering broadcast content to cellphones directed to an abstract idea.
(2) 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 (e.g., McRO’s claims defined a specific way, namely use ofparticular rules to set morph weights and transitions through phonemes, to solve the problem ofproducing accurate and realistic lip synchronization and facial expressions in animated characters, and thus were not directed to an abstract idea). In contrast, Electric Power Group’s claimed method was directed to an abstract idea because it merely presented the results of collecting and analyzing information, without even identifying a particular tool for the presentation.”

With respect to BASCOM, the USPTO stated:

“In Step 2B ofthe USPTO’s SME guidance, examiners should consider the additional elements in combination, as well as individually, when determining whether a claim as a whole amounts to significantly more, as this may be found in the nonconventional and non-generic arrangement of known, conventional elements. See also the discussion of evaluating combinations of additional elements in the May 4, 2016 Memorandum (in Section Il.B), and the July 2015 Update (in Section I).”

The good news, it appears that the USPTO is making Software patents slightly easier to issue!

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