New Guidelines for Software Patents

Effective January 7, 2019 U.S. patent examiners will have a new set of guidelines at their disposal to evaluate software patent applications.  The guidelines have codified recent case law to provide more consistency in Patent Office actions dealing with software.

The new guidelines emphasize that when evaluating a software patent application an examiner must apply a multi-faceted two-part test.  Step 1, identify if the invention involves an abstract idea falling within a judicial exception to patentability.  Step 2, if the invention involves an abstract idea, determine whether the entire invention is “directed to” an abstract idea.   The invention is considered “directed to” an abstract idea if it does not have a practical application.  If this hurdle is not overcome, then an examiner is to evaluate whether the application itself provides something more than an abstract idea under the second prong of the Alice/Mayo case law.

If you have questions or concerns related to protecting your company’s software, please contact us at (321) 255-2332.