Patent applicants who have been frustrated by patent examiners who reject claims under 35 U.S.C. § 101 alleging that “software per se” is not patent-eligible will be heartened by the USPTO’s May 19, 2016, memorandum concerning “Recent Subject Matter Eligibility Decisions” to the Patent Examining Corps.  In that memorandum, discussing the recent Federal Circuit case of Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A. V Automotive, LLC, the USPTO told its examiners “that claims directed to software, as opposed to hardware . . . are not inherently abstract.”  Thus, applicants have basis for arguing that claims directed to data processing, for example, are not inherently abstract.

As the memorandum explains, Enfish stands for the proposition that, in some cases, examiners can resolve the patent-eligibility question in favor of the applicant at the first step of the two-part Alice/Mayo test, i.e., can determine that the claimed subject matter is not directed to an abstract idea without going on to determine whether the claims recite “significantly more” than an abstract idea.  While not a new statement of law, as the USPTO notes, practitioners will welcome any authority to force patent examiners to acknowledge that claims directed to “pure” software, or “only” to processing data, are not necessarily or inherently directed to a patent-ineligible abstract idea.

At the same time, the USPTO noted that, in the TLI case, claims were found “to be directed to the abstract idea of classifying and storing digital images in an organized manner,” and that hardware elements for performing the steps did not “add significantly more to the abstract idea.”  In other words, enthusiasm engendered by Enfish should be tempered by the realization that many software claims will remain subject to patent-eligibility rejections.  The USPTO also cautioned examiners to continue to refer to the examples in its previously-promulgated Subject Matter Eligibility Guidance, i.e., “to continue to determine if the claim recites . . . a concept that is similar to concepts previously found abstract by the courts.”

But the last sentence of the USPTO’s memorandum is perhaps its most significant, because it applies to claims directed solely to software:

The fact that a claim is directed to an improvement in computer-related technology can demonstrate that the claim does not recite a concept similar to previously identified abstract ideas.