On the heels of the Federal Circuit handing down two subject matter eligibility decisions regarding software, the U.S. Patent and Trademark Office has published a memo to its examining corps regarding these cases.  On May 12, in Enfish, LLC v. Microsoft Corp., the Court found software claims patent-eligible for the first time in almost 18 months.  Five days later, in TLI Communications LLC v. AV Automotive, L.L.C., the Court once again invalidated claims directed to software for failing to meet the requirements of the two-part test set forth in Alice Corp. v. CLS Bank Int'l.

When applying the test to a claim, one must first determine whether the claim at hand is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea.  If so, then one must further determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exception.  Notably, generic computer implementation of an otherwise abstract process does not qualify as "significantly more."

As has become common practice in these memos, the USPTO sticks closely to the language of the cases.  Particularly four points are made about the Enfish decision:

First, the court noted that when determining whether a claim is directed to an abstract idea, it is appropriate to compare the claim to claims already found to be directed to an abstract idea in a previous court decision.

Second, the court emphasized that the "directed to" inquiry applies a filter to claims, when interpreted in view of the specification, based on whether their character as a whole is directed to a patent ineligible concept.

Third, the Federal Circuit cautioned against describing a claim at a high level of abstraction untethered from the language of the claim when determining the focus of the claimed invention.

Fourth, the court stated that an invention's ability to run on a general purpose computer does not automatically doom the claim.

The second and third points may be the most helpful for patentees.  The second point permits "an examiner [to] determine that a claim directed to improvements in computer-related technology is not directed to an abstract idea" under the first prong of Alice, without having to analyze additional elements under the second prong.  In making this determination, the examiner may look to the specification's teachings to decide whether the claimed invention achieves benefits over conventional approaches.

The third point may come in handy when a patentee argues that the examiner has not established a prima facie case of subject matter ineligibility.  All too often, examiners characterize the claimed invention in a brief summary that, at best, describes the invention at a very high level and in simplistic terms.  Here, the Office appears to be instructing the examining corps to honor the language of the claims when considering whether they are directed to an abstract idea.  As a result, examiners may find it more difficult to conclude that some claims are abstract.

The USPTO discussed the TLI case mainly because it provides contrast to Enfish.  The claims therein were found patent-ineligible because they "describe steps of recording, administration and archiving of digital images . . . directed to the abstract idea of classifying and storing digital images in an organized manner" and "the additional elements of performing these functions using a telephone unit and a server did not add significantly more to the abstract idea because they were well-understood, routine, conventional activities."

As the memo correctly points out, these decisions are consistent with the USPTO's subject matter eligibility guidance from July 2015.  Nonetheless, applicants and patent holders may benefit from the substantive and procedural clarifications discussed above.

Already, some are contending that Enfish and TLI cannot be reconciled with one another.  This is not true.  Enfish stands for the notion that an improvement to computing technology, whether software or hardware, is not in and of itself abstract.  TLI, on the other hand, reaffirms that merely using generic computer technology to carry out a procedure does not add patentable weight to a claimed invention.  In one case, the claims recite the invention of new technology, and in the other case, the claims recite the use of old technology.  A clear line has been drawn.

Still, many new and useful inventions are based on novel arrangements of old technology, and these inventions are at risk in a post-Alice world.  We find ourselves in this state of affairs because the Alice test allows one to subjectively divide a claim into abstract and non-abstract parts when considering patent-eligibility, rather than view the claim as a whole.  Nonetheless, if we accept that we have to live in the world of Alice at least for now, the distinction between Enfish and TLI is critical to understand, as it provides a roadmap to patent-eligibility for a great many software inventions.