ROYAL OAK – What types of software are most and least likely to be considered patentable? Intellectual Property attorney Keith Schonberger, with the Young Basile law firm, explains the difference in this segment of M2 TechCast. He said some recent court cases have shaped this distinction.

In a February report on M2 TechCast, Schonberger talked about software patentability. Before we get into what’s changed since then, Schonberger recaps for listeners what he had said earlier.

Schonberger: The law for determining whether something is eligible for patent protection in the US changed in June 2014 by the Supreme Court’s opinion in Alice v CLS Bank. The courts and USPTO now use a two-step test, where a first step asks whether the claimed invention is abstract and the second step asks, if it is abstract, does it include significantly more than the abstract idea.

So what’s changed?

Schonberger: Although the two-step test confirmed by the Alice case still stands, we now have a better understanding of at least one of the steps. Last month, the Court of Appeals for the Federal Circuit decided the case Enfish v Microsoft, which involved a patent infringement action brought by Enfish against Microsoft. The lower court invalidated Enfish’s patent by finding it to not satisfy the two-step test from Alice, but the Federal Circuit reversed that decision, saying that the claims are directed to eligible subject matter.

Why did the Federal Circuit reverse the lower court’s decision?

Schonberger: Essentially, the Federal Circuit reevaluated the technology and determined that it was not abstract, and so it did not fail the first step of the test. Enfish’s patent claimed a special kind of database that used self-referential logic for storing data. The court found that the database was not abstract because databases are computer implements and the quality of it using self-referential logic constituted an improvement in the computer implementing the technology.

Improvements to computers are one of the categories of invention that pass the test. So, what’s so special about this?

Schonberger: The USPTO has previously released guidelines on how to address patent eligibility concerns, and one of the categories of technology that was posited could overcome the issues pertained to improvements in the function of a computer; however, we have not yet had a court decision that effectively delimited what that means, and there have been too many instances where patent examiners at the USPTO have inconsistently considered this aspect.

What other recent developments have there been in this area?

Schonberger: Another case decided by a same panel of judges as Enfish held that software claims were not patentable in view of the test. [I will further discuss this case, TLI.] In response to the TLI and Enfish cases, the USPTO released a statement indicating that those cases are to be considered for assessing patentability in further cases.

What do you think is in store for software patentability in the future?

Schonberger: We’ll have more delimited definitions of what actually constitutes patentable subject matter. We may have legislative reform eventually, but any change may not be for some time.

If you have questions, you can contact Schonberger at  (248) 649-3333 Email: [email protected]

To listen, click on https://soundcloud.com/podcastdetroit/m2-episode-37-patent-law-young-basile?in=podcastdetroit/sets/m2techcast-on-podcastdetroit#t=0:00