The issue of patent eligible subject matter under 35 USC § 101 affects many different types of inventions including those which incorporate software technology for controlling conventional machines and devices. Although the Alice v. CLS Bank decision by the U.S. Supreme Court has made it more difficult to patent software-related inventions, recent Federal Circuit decisions interpreting this decision have subsequently softened the blow.
In Alice, the U.S. Supreme Court established a two-step analysis for determining patent eligible subject matter in which (1) it must first be determined whether the claims of an application are directed to an “abstract idea,” and, if so, (2) there must be an “inventive concept” which the U.S. Supreme Court defined as an element or combination of elements sufficient to ensure that the patent in practice amounts to “significantly more” than a patent upon the abstract idea itself. Recent decisions from the Federal Circuit interpreting the two-step analysis of Alice have developed grounds and rationales for persuasively arguing that a claimed invention is not directed to an ineligible abstract idea.
The Federal Circuit in Enfish, LLC v. Microsoft Corp. found “it relevant to ask whether the claims are directed to an improvement to computer functionality” under the first step of the Alice framework. The patent in dispute had claims directed to a self-referential database, and the description of the patent described multiple benefits of this database design which included faster searching of data, more effective storage of data, and more flexibility in configuring the database. In view of the benefits described in the description, the Federal Circuit found that the focus of the claims was to improve computer functionality itself. Accordingly, the Federal Circuit held that the claims were not directed to an abstract idea under the first step of the Alice framework because they addressed a specific improvement to the way computers operate.