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ARTICLE · 05 AUGUST 2015

Careful Claim Drafting Can Make The Difference For Software Inventions Under USPTO's § 101 Analysis

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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Finnegan, Henderson, Farabow, Garrett & Dunner LLP

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Since providing its Interim Guidelines on Patent Eligibility in December 2014 and additional examples in January 2015, the USPTO has received over sixty public comments.

United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
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Since providing its Interim Guidelines on Patent Eligibility in December 2014 and additional examples in January 2015, the USPTO has received over sixty public comments. In response to the comments and recent case law developments, the USPTO released new guidelines on July 30, 2015, including an Appendix 1 with seven new examples. The examples provide analysis of claims directed to abstract ideas, particularly in the business method, graphical user interface (GUI), and software areas. Examples in the biotechnology area, the USPTO says, are "in process."

Example 23 provides a particularly interesting contrast of hypothetical claims, presenting two eligible and two ineligible claims directed to the same GUI invention.

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