More software to be patentable in US: New exam guidelines released.

This is an important event: The United States Patent and Trade Mark Office (USPTO) has released new examination guidelines for the patentability of software patents, which can be found here.

Of great practical interest, are the inclusion of examples of software that are considered patentable.  This adds to an earlier January 2015 document Examples: Abstract Ideas which provides examples of what the USPTO believes, in their opinion, are patentable and non patentable software type inventions.

The examples are very useful for practitioners and applicants who are considering if a new software invention is patentable.

The new guidelines emphasis that claimed computer elements are not to be considered individually, but in combination, to determine if something more than a mere abstract idea is being claimed.  This is significant, because it makes it harder for examiners to cross off claimed computer elements one by one, leaving only an abstract features in a claim.

Applicant’s should make the most of this.  Quoting the guidelines:

Examples 3 (AI‐3: digital image processing), 4 (AI‐4: global positioning system), 21 (transmission of stock quote data), and 25 (rubber manufacturing) illustrate how generic computer components that individually perform merely generic computer functions (e.g., a CPU that performs mathematical calculations or a clock that produces time data) are able in combination to perform functions that are not generic computer functions and that amount to significantly more

This is a breakthrough in the patentability of software in the US: It appears that the USPTO considers that software running of a generic computer may be patentable.

US examiners are also being instructed not to find a claimed invention abstract unless there are similarities with an invention identified as abstract by the US courts.  That is, the judgments are to be read narrowly: Judicial exceptions to patentable subject matter are just that, exceptions.

This guideline is also significant, and should result in more software being patentable in the US.

US examiners are required to clearly articulate the reasons why a claims invention is not, in their opinion, eligible.

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