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New guidance provides optimism for securing software patents in the US

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The US Patent and Trademark Office (USPTO) has released its Interim Guidance on Patent Subject Matter Eligibility, which will provide some optimism to those pursuing patent protection for software-related innovation in the US.

The guidance has been closely anticipated, following a landmark ruling in the case of Alice Corp vs CLS Bank International on June 19, 2014. The ruling concluded that the patents in question could not be enforced because they were based on an abstract idea which had simply been computerised.

This new guidance is intended to encourage investment and innovation in the technology sector, after initial guidelines released in June 2014 stopped short of specifying a clear test of eligibility to guide businesses. Andrew Thompson, a partner at Withers & Rogers, a leading firm of patent and trade mark attorneys, said

The latest guidance from the USPTO is very welcome as the information it issued in June last year was brief and unclear. Greater clarity has now been provided in the form of an outline of some specific examples of the types of invention that will be eligible for patent protection.”

The inventions that are eligible for patent protection include:

  • Improvements to another technology or technological field
  • Improvements to the functioning of a computer
  • A process that enhances the usage of a particular machine (not a generic computer)

It is good news that the development of software inventions designed to improve the functionality of a device will continue to be patentable. This had been a concern for some UK-based innovators seeking patent protection in the US.

 However, it is worth highlighting that the examples given in the new guidance are not exclusive and there are a number of other innovations that are so obviously patent eligible that they don’t need to be checked against the new guidelines – for example, controlling a robotic arm using certain mathematical relationships or algorithms.

 What is also helpful is that there has been an assessment of relevant US cases, many of which pre-date the Alice ruling. One interesting outcome of this process is that an invention that successfully improves an image processing system was found to be eligible and should continue to be under the new guidance.

 Written by Andrew Thompson, a partner at Withers & Rogers, a leading firm of patent and trade mark attorneys

 

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