The new USPTO guidelines will hopefully straighten out the problems for PTO examiners as well as judges regarding the eligibility for patentability of software. In this situation eligibility means that the invention is considered as an abstract idea and as such not patentable since abstract ideas have been deemed basic tools of scientific and technological work.
The Alice/Mayo test, named after two previous Supreme Court judgements, has been applied in the examination of a number of software applications where the subject matter claimed in the application has been considered non-eligible, without any consideration if this subject matter has been identified as an abstract idea.
A two-step analysis
The new guidelines provide an analysis in two steps, starting by considering if the subject matter might be identified as an abstract idea. This examination is supported by a model for grouping
abstract ideas, namely mathematical concepts, methods for organizing human activity and mental processes.
If a subject matter is identified as an abstract idea, there is still a possibility for it to be considered eligible, namely if the subject matter is integrated into a practical application. When examining if
such eligibility is at hand, the claim as a whole has to be considered, i.e. including all additional elements, whether or not they are conventional or abstract and as such not eligible.
The guidelines provide a set of exemplary considerations for this examination. If an additional element reflects an improvement in the functioning of a computer, to another technology or technical field; effects a particular treatment or prophylaxis for a disease or medical condition; is used in conjunction with a particular machine or manufacture; effects a transformation or reduction of a particular article to a different state or thing; in a meaningful way links the use of an abstract idea to a particular environment; then the subject matter might be considered eligible.
What about Europe?
The EPO launched new guidelines directed towards AI and machine learning applications in 2018, most probably with the same intentions as the USPTO, i.e. enhancing the European and American ambitions to become the world technology leader in software, especially in AI and machine learning.
The EPO guidelines do not apply the two-step analysis of the USPTO guidelines. The examiners of the EPO are looking for technical effects supporting a technical purpose if a claim describes abstract elements or comprises abstract references.
Presently, there is no new case law based on the EPO guidelines, but it is apparent that the new guidelines have been applied in several cases of the EPO examinations.
The present situation – and what to do
The overall impression when prosecuting patent applications in both the EPO and the USPTO is that there is a tendency in the EPO examinations to look for triggers, i.e. elements supporting a technical
effect, not the technical effect as a result of an accumulated effect of all elements presented, including the abstract or conventional elements contributing to the overall technical effect obtained. USPTO examiners on the other hand tend to look for the accumulated effect, including abstract or conventional elements contributing to the practical use.
Unfortunately, this leaves us in a situation where EP applications based on priority from US applications often are confronted with a tougher view in the examination at the EPO than in the USPTO, resulting in patented inventions for the US market but in rejected applications in the EPO regarding the European markets.
Furthermore, this raises the question for US applicants with a view towards European market to review their US applications before filing in order to meet the EPO requirements.
Since both the USPTO and the EPO have declared that their new guidelines are steps forward for putting the US and Europe on the top globally as the most AI and machine learning friendly areas, let us just hope that there will be some convergence in the interpretation of patent claims in accordance with the new guidelines.
By Jonas Delander & Viveka Anderberg
Jonas Delander is a European Patent Attorney, MSc (E), mainly focusing on advice and patent prosecution in the fields of software and Artificial Intelligence. For several years he held a position as Senior Patent Counsel at one of Sweden’s most successful IT companies, then focusing on the patenting aspects of digitalisation. Get in contact with Jonas here >>>
Viveka Anderberg is a European Patent Attorney, MSc (Ph). Her focus is on digitalisation, mechanics and electronics. She has a vast experience in international patent prosecution with a particular interest in US filings. Get in contact with Viveka here >>>