New USPTO guidance document proposes to lower hurdles for software patents

Under the two-step eligibility test derived from the United States Supreme Court decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., and subsequently refined in Alice Corp. (the “Alice/Mayo test”), USPTO patent examiners are directed to consider 1) whether the patent claims before them are “directed to” either an abstract idea, a law of nature, or a natural phenomenon (in other words, a “judicial exception”), and 2) if they are, whether the claims contain a sufficient “inventive concept” – an element or combination of elements which “ensure that the patent in practice amounts to significantly more than a patent upon” an ineligible concept such as an abstract idea itself.

The 2019 Revised Guidance makes at least two important changes to this eligibility framework.

1. First, the Revised Guidance proposes to narrow the scope of what will be considered an unpatentable “abstract idea”. Software and computer programs are excluded from the USPTO’s proposed definition.
2. Second, the Revised Guidance proposes that, even if a patent claim is “directed to” a judicial exception, it may nonetheless be patent-eligible if the claim integrates the unpatentable element (for example, an abstract idea) into a practical application.

These proposed changes will lower the hurdles for software and computer program developers to seek patent protection for their inventions.

Some commentators have suggested that the proposed changes are likely to lead to an increase in the activity of “patent trolls” in the software and tech space. Patent trolls buy patents from companies and seek to enforce the patents for profit against companies which infringe them.

For now, the proposed changes relate solely to American patent eligibility rules applied by the USPTO. Canadian courts have consistently held that the patentability of certain subject matter in other jurisdictions does not affect eligibility rules within Canada.

In Canada, in addition to having patent eligible subject matter, an invention must also meet a number of other statutory tests in order to be patentable. Under Canada’s Patent Act, these requirements include novelty, utility, and inventiveness (“non-obviousness”).

The USPTO is seeking comments from the public on the Revised Guidance until March 8, 2019.

Authors: Larissa Fulop and Wes Dutcher-Walls, 2018/2019 Articling Student-at-law