Sep 9, 2019

After the 2014 U.S. Supreme Court decision of Alice v. CLS Bank, software patents issued by the United States Patent and Trademark Office (USPTO) sharply declined. That decision emphasized that abstract ideas are not patentable. The application of that decision was then applied against software. However, in the past couple of years the court system has carved out enough exceptions to the general rule to safely say that software is in fact patentable so long as that software meets certain criteria. An amalgamation of case law has formulated a two-part test to help fine tune that criteria, although the test is not bright lined.

In an attempt to codify the case law and bring clarity to the two-part test, on January 7, 2019 the USPTO issued guidelines that added a "practical application" question to the analysis. Meaning, according to the USPTO, if otherwise abstract ideas have a practical application, they may be patentable. While many practitioners rejoiced, that celebration was premature.

On Monday, April 1, 2019 the Federal Circuit, which is the high court for patents, ruled in Cleveland Clinic Foundation et al. v. True Health Diagnostics LLC that the court system is not bound by the USPTO guidelines. The court made it clear that the status of the law still rests with the court system itself.

So, what does this mean? We are back to a system where case law and a mastery of the legal issues is paramount when prosecuting a software patent application. Having a patent attorney with a computer science background as well as a litigation and trial background to help navigate a USPTO 35 USC 101 rejection based on abstractness is key.