USPTO Memo Indicates a ‘European’ Approach to Software Inventions

Earlier this month, the USPTO issued a memorandum to patent examiners discussing recent court decisions regarding the patentability of software inventions. The memo refers to three federal circuit decisions in which software inventions were found to be eligible for patent protection. The three decisions mentioned in the memo are McRo v. Bandai (Sept. 2016), BASCOM v. AT&T (Jun. 2016) and Amdocs v. Openet (Nov. 2016).

Recently, I summarised the McRo and BASCOM decisions in a blog post for Cambridge Wireless. The Amdocs decision was issued only a day before the USPTO published its memo to examiners on this issue. Therefore, Amdocs is not considered in detail in the memo. However, the USPTO states that further guidance on the Amdocs decision will be given at a later date.

In the memo, the USPTO offers instruction to examiners as to how they should assess the patentability of software in light of the recent federal circuit decisions. Specifically, the memo indicates that claims defining an “improvement in computer-related technology” are patentable. In addition, it indicates that a claim defining “a particular solution to a problem” should be patentable.

By comparison, the European Patent Office considers the patentability of software inventions by asking whether the claims define a “technical solution” to a “technical problem”. For instance, if the software defined in the claims do, in fact, define a technical solution to a technical problem, then the claims are eligible for patent protection. However, if there is no such technical solution, then the claims are not patentable.

It appears that the recent memo instructs US patent examiners to consider a very similar question to the question considered by European patent examiners when assessing software inventions. This is good news for European patent attorneys, since it demonstrates that the US and European approaches are becoming more closely aligned with one another.

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