As many software-related inventors can attest, patent protection can be difficult to obtain for software applications. Most software-related patent applications are rejected by United States Patent and Trademark Office (USPTO) examiners, particularly under 35 U.S.C. § 101 – the statute that defines what constitutes “patent-eligible subject matter.” These rejections can be particularly frustrating for inventors and patent practitioners, because they often include vague language from sometimes-conflicting court opinions, particularly those issued by the Supreme Court and Federal Circuit. As such, it is difficult to answer the question of what is included in the § 101 definition of patent-eligible subject matter, especially in the software field.
The courts and the USPTO recognize the difficulties created by current analyses under 35 U.S.C. § 101, and are working to make decisions on patent-eligibility more consistent, predictable, and clear. Accordingly, on April 19, 2018, the USPTO issued § 101 guidance for its patent examiners, based on a Federal Circuit opinion, Berkheimer v. HP, Inc., decided on February 8, 2018.
The Berkheimer case involved U.S. Patent No. 7,447,713 (‘713 Patent), directed to a digital asset management system that processes and archives files. The ‘713 Patent teaches the elimination of redundant elements to improve efficiency and reduce storage costs, as well as an editing process that allows edits to apply to all archived documents that include the edited element (referred to as a “one-to-many editing system”)
Mr. Berkheimer asserted the ‘713 Patent against HP; during litigation, the Northern District of Illinois determined that the claims of the ‘713 Patent were ineligible for patent protection under 35 U.S.C. § 101, as allegedly being drawn to an abstract idea that does not “involve more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’”
The Federal Circuit reviewed the district court decision, and determined that, while some of the claims were invalid due to being indefinite (the ‘713 Patent did not provide a definition of “minimizing redundancy” in a document set), the one-to-many editing system may constitute patent-eligible subject matter under § 101. As explained by the Federal Circuit,
Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional. Berkheimer, pg. 14.
In other words, just because an idea has been disclosed before filing a patent application, the idea is not necessarily “well-understood, routine, and conventional” without additional evidence.
Accordingly, the USPTO guidance clarifies how a patent examiner should analyze claims to determine patent-eligible subject matter. Per the USPTO, “an examiner should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry.” To do so, examiners must expressly support a rejection by providing evidence that the element(s) was conventional, such as through admissions in the patent application’s specification, a citation to a similar court decision, or a citation to a well-known printed publication (in other words, the publication must be known to those within the relevant field, and should not be an obscure and unknown reference). Absent such an express finding, the examiner should not reject the claim(s) based on the § 101 subject-matter eligibility provisions.
Hopefully the Berkheimer opinion, and the resulting USPTO guidance, help create more consistent and predictable examination of patent applications in certain fields, such as software technologies. If so, inventors and patent practitioners can work to develop strategies to obtain patent protection on software improvements within the USPTO’s framework under § 101.