The Berkheimer memorandum, issued by the USPTO on 19 April 2018, is good news for applicants of US software-related patents.

In summary, an examiner at the USPTO is now obliged to factually prove that any “additional features” of a claim are well-understood, routine, and conventional in order to support an "abstract idea" rejection. Hence, if a claim is novel and inventive, it should now be easier to show that it is also patent eligible (i.e. that it relates to patentable subject-matter).

It is widely acknowledged that the patenting of software-related inventions became more difficult in the US following the decision in 2014 of the US Supreme Court in decision known as "Alice" (Alice Corp. v. CLS Bank International).

Following the Alice decision the USPTO issued guidance on the so-called Mayo/Alice test, which is a two-part test having the following steps (which are labelled as steps 2A and 2B in the USPTO's guidance):

Step 2A - Determine whether the claim is directed to a judicial exception, such as a law of nature, a natural phenomenon, or an abstract idea.

Step 2B - Determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exception.

In particular the second step has been inconsistently applied, as examiners have interpreted what counts as “significantly more” with varying results. A consideration when evaluating the second step is whether the additional elements are well-understood, routine and conventional in the industry. If not, then this favours patent eligibility.

The Berkheimer memorandum (which follows the US Federal Circuit’s opinion in Berkheimer v. HP case no. 2017-1437) clarifies the second step of the Mayo/Alice test, and also revises the examination procedure for rejecting claims on that basis. The memorandum states that the conclusion of whether an element is well-understood, routine and conventional must be based on a factual determination. Indeed the memo seemingly suggests that a claim recites “significantly more” unless proven otherwise, and states that an additional element is not well-understood, routine or conventional unless the examiner finds, and expressly supports such a rejection in writing. The memo makes clear that such a statement by the examiner will normally require a citation to be provided by the examiner.

Furthermore, it is not sufficient for an element simply to be disclosed in a prior art citation for it to be considered routine. The citation has to make it clear that the element is in fact routine, e.g. by stating “it is common to use…”, “it is standard practice to…” etc., which makes the test significantly stricter than the requirement for supporting a novelty rejection. If the Examiner is unable to find a citation with such a statement, then it will be difficult for the examiner to maintain a rejection based on unpatentable subject-matter.

The memo states that the USPTO's Manual of Patent Examining Procedure (MPEP) will be updated in due course to incorporate the changes put into effect by the memo.

It is pleasing to see that the USPTO is giving serious consideration to the area of patentable subject-matter. Indeed, the opening sentence of the Berkheimer memorandum reads, "The USPTO recognizes that unless careful consideration is given to the particular contours of subject matter eligibility (35 U.S.C. § 101), it could 'swallow all of patent law' ", quoting from the Alice and Mayo decisions.

In conclusion, we are carefully optimistic that the Berkheimer memorandum heralds a significant change to the interpretation of subject-matter eligibility in the US. At least, the revised examination procedure provides a new hurdle for the Examiner to overcome in order to reject a claim as relating to unpatentable subject-matter.