Supreme Court cases, Alice Corporation Pty. Ltd. v. CLS Bank International (Alice), Mayo Medical Laboratories, et al. v. Prometheus Laboratories, Inc. (Mayo), and Bilski v. Kappos (Bilski) address the threshold question of subject matter eligibility. That is, is the inventor seeking to protect something that is not patentable, such as phenomena of nature, mental processes, and abstract intellectual concepts?
In Alice, the Supreme Court held that software programs could be considered abstract ideas and that merely performing them on a generic computer does not make them eligible subject matter for a patent (i.e., non-abstract). After reviewing the Supreme Court's interpretation of the statute, the USPTO issued guidelines for determining subject matter eligibility.
In the new guidelines, examiners will first consider if the invention is directed to a process, machine, manufacture, or composition of matter. If the invention is not directed to a process, machine, manufacture, or composition of matter then the claim will be rejected under 35 USC 101. Otherwise, examiners will then consider a two-part test of subject matter eligibility for each claim.
Part 2A: Is the claim directed to a law of nature, a natural phenomenon, or an abstract idea (these are called judicial exceptions)? If the claim is not directed to a judicial exception, your claim survives the test. However, if your claim is directed to a judicial exception the examiners will apply part 2B.
Part 2B: Is any element, or combination of elements, in the claim sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception? If the claim is not significantly more, then your claim is not eligible subject matter under 35 USC 101 and will be rejected by the examiner.
For example, the examiner might consider your claims directed to an "abstract idea" if your claim is directed to steps performed in software. The examiner will look at additional claim elements and determine if they amount to significantly more than the judicial exception of an "abstract idea." For example, the examiner will determine if the additional claim elements are merely superfluous or simply generic hardware that nearly every computer will include.
What does a patentable software claim look like? Fortunately, the USPTO has released some examples. Reviewing the model claim language and analysis will help us understand what the examiner will be looking for in a successful application.
Consider a claim to a software routine that recites a series of acts for protecting a computer from an electronic communication containing malicious code. A claim from the example is shown below:
1. A computer-implemented method for protecting a computer from an electronic communication containing malicious code, comprising executing on a processor the steps of:
receiving an electronic communication containing malicious code in a computer with a memory having a boot sector, a quarantine sector and a non-quarantine sector;
storing the communication in the quarantine sector of the memory of the computer, wherein the quarantine sector is isolated from the boot and the non-quarantine sector in the computer memory, where code in the quarantine sector is prevented from performing write actions on other memory sectors;
extracting, via file parsing, the malicious code from the electronic communication to create a sanitized electronic communication, wherein the extracting comprises
scanning the communication for an identified beginning malicious code marker,
flagging each scanned byte between the beginning marker and a successive end malicious code marker,
continuing scanning until no further beginning malicious code marker is found, and
creating a new data file by sequentially copying all non-flagged data bytes into a new file that forms a sanitized communication file;
transferring the sanitized electronic communication to the non-quarantine sector of the memory; and
deleting all data remaining in the quarantine sector.
The USPTO materials state that "the method claim recites a series of acts for protecting a computer from an electronic communication containing malicious code. Thus, the claim is directed to a process, which is one of the statutory categories of invention (Step 1: YES)."
The claim is then analyzed to determine whether it is directed to any judicial exception: "the invention claimed here is directed towards performing isolation and eradication of computer viruses, worms, and other malicious code, a concept inextricably tied to computer technology and distinct from the types of concepts found by the courts to be abstract. Accordingly, the claimed steps do not recite an abstract idea." The claimed steps are not directed to a judicial exception, therefore the claim is eligible (Step 2A: NO).
In another example, the USPTO materials describe a process claim that recites a series of acts that convert a grayscale image to a black and white halftone image using a "blue noise" mask. It's worth noting that the USPTO materials state "the claimed process with the improved blue noise mask allows the computer to use less memory than required for prior masks, results in faster computation time without sacrificing the quality of the resulting image as occurred in prior processes, and produces an improved digital image. These are also improvements in the technology of digital image processing. Unlike the invention in Alice, the instant claim is not merely limiting the abstract idea to a computer environment by simply performing the idea via a computer."
Additional successful and unsuccessful claim writing strategies are included in the post-Alice examination guidelines. Readers are encouraged to review all of the examples. Receiving a patent that can be enforced in court will depend on careful observance of these new claim writing principles. Keep in mind that the practice of patent drafting and enforcement can change at any time. Work closely with a qualified patent attorney to ensure you get the best patent protection for your software.