May 23, 2016
Authored and Edited by Kai Rajan; Adriana L. Burgy
On May 19, 2016, the US Patent and Trademark Office (USPTO) released a 2-page memo on "Recent Subject Matter Eligibility Decisions (Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A. V Automotive, LLC)." The memo brings good news for software patents, which have seen relentless attacks under 35 U.S.C. § 101 since the Supreme Court's Alice decision in 2014.
The majority of the memo discusses the Enfish decision issued on May 12, 2016, in which the Federal Circuit not only found claims directed to database software to be patent-eligible under § 101, but also made generalized, pro-patent comments about software inventions. The USPTO memo summarized the Federal Circuit's pro-patent commentary, and included statements that may help to reign in overreaching § 101 rejections that have little or no basis. Some notable directives from the memo include:
Though the pendulum has not swung completely back to the "patent-eligible" corner, the Enfish decision and the USPTO memo are certainly helpful tools for patent applicants facing Alice-type 101 rejections. For example, the quotes above may be helpful to traverse rejections that mischaracterize claims or fail to properly identify an abstract idea. The Enfish decision also contradicts allegations in some Office Actions suggesting that general purpose computers weigh against patentability.
Unfortunately, the USPTO memo was not all positive news for patent applicants. The memo also discussed the recent Federal Circuit decision in TLI Communications LLC v. A. V. Automotive, LLC (May 17, 2016), in which the Federal Circuit found claims directed to digital image recording, administration, and archival to be "directed to the abstract idea of classifying and storing digital images in an organized manner." The memo did not comment extensively on the TLI Communications decision, but noted that the TLI Communication claims were directed to "generalized steps" performed using "conventional computer activity," whereas the Enfish claims embodied a non-abstract "improvement to computer functionality."
The gray line between "abstract" and "non-abstract" remains vague, but the Enfish decision and USPTO memo are steps in the right direction for patent applicants.
If you'd like to read more about the Enfish decision, please visit the case summary published on Finnegan's Federal Circuit IP Blog.
Copyright © 2016 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
June 10-12, 2024
San Francisco
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
Workshop
Life Sciences Workshop: Updates and Key Trends in Pharmaceutical and Biotechnology IP Law
May 2, 2024
Cambridge
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.