Overcoming patent rejection
The US Patent and Trademark Office (USPTO) has issued three memoranda concerning several cases involving questions of subject matter eligibility under 35 USC §101 which have decided in 2018 by the US Court of Appeals for the Federal Circuit, including Finjan v Blue Coat Systems; Core Wireless Licensing v LG Electronics; Berkheimer v HP; and Vanda Pharmaceuticals v West-Ward Pharmaceuticals.
After Alice v CLS Bank (2014), the US Supreme Court set forth a two-step process for determining subject matter eligibility under 35 USC §101: (1) determine whether the claims recite a patent-ineligible concept and, if they do, (2) determine whether the claims, individually and in combination, contain an inventive concept that transforms the claims into “significantly more” than the patent-ineligible subject matter.
Finjan
In Finjan, the Federal Circuit used the two-step approach for determining subject matter eligibility developed after Alice, but only proceeded through step 1. In doing so, the court found that the claims, which recite a system and method for providing computer security by attaching a security profile to a downloadable file, constituted “a non-abstract improvement in computer functionality” because the claims are directed towards generating a security profile that identifies suspicious code and linking it to a downloadable file. Thus, the claims do not merely recite the intended result.
The USPTO stated in the memorandum published on April 2, 2018 that this holding provided clarity on what constitutes eligible subject matter for software-related inventions and further stated that the Finjan holding is consistent with the previous subject matter eligibility guidelines because the claimed method “recites specific steps that accomplish a result that realises an improvement in computer functionality”.
Core Wireless Licensing
Similarly, in Core Wireless Licensing, the Federal Circuit and subsequently the USPTO focused on the aspect of improvement of the user experience. The court found that the display of an application summary (while applications are not open) in the graphical user interface on an electronic device was an improvement to the user interface.
Claim 1, which was found to be patent-eligible in Core Wireless, recites the features “… an application summary that can be reached directly from the menu, wherein the application summary displays a limited list of data … each of the data in the list being selectable to launch the respective application … is displayed while the one or more applications are in an un-launched state”.
