• ‘Alice&lrquo; in 2017: Does the PTO's Latest Guidance Clear the Minefield?
  • April 27, 2017 | Authors: James J. DeCarlo; Nicholas Martin
  • Law Firms: Greenberg Traurig, LLP - New York Office; Greenberg Traurig, LLP - Austin Office
  • The 2014 decision in Alice Corp. v. CLS Bank International , 134 S.Ct. 2347 (2014), provided examiners at the United States Patent and Trademark Office (USPTO) with ample ammunition to find financial, computer, software and even medical applications ineligible under 35 U.S.C. §101. Software patents are under particular duress, and the challenges patent practitioners currently face at the PTO and in the courts continue to evolve. Recent Federal Circuit decisions, and updated Guidance issued by the USPTO (available online at www.uspto.gov) have provided practitioners with a new roadmap to navigate the minefield left in Alice's wake.

    New Case Law Leads to New PTO Guidance

    Current decisions of importance to software practitioners that have led to revisions to the PTO's eligibility Guidance include Enfish v. Microsoft Corp.; TLI Communications v. AV Automotive; McRO v. Bandai Namco Games America; Amdocs v. Openet Telecom and BASCOM v. AT&T.

    By way of brief review, the Enfish court found software claims to be patent-eligible. The court's reasoning was founded on the patent's specification providing ample support for addressing and improving existing technology. However, five days after issuing the Enfish decision, the court in TLI Communications invalidated software claims because they failed the two-part test put forth in Alice because, inter alia, they simply recited "well-understood, routine, conventional activities."