Wednesday, September 14, 2016

Patent Eligibility for Software and Business Method Patent Applications

This blog recently expressed a hope that the courts would re-visit business method patent eligibility following the infamous Supreme Court “Alice” decision which eventually opened the door for most business method applications to be held ineligible.  Fortunately, the Federal Circuit Court of Appeals on May 12, 2016 issued the Enfish decision which resurrected business methods – briefly.  

Since then, 3-Justice panels of the Federal Circuit have issued a series of conflicting opinions concerning business method eligibility.  Legally speaking, the issue turns on whether an invention happens to be directed to a mere “abstract” idea.  Practically speaking after reviewing the post-Enfish decisions, the key factor appears to be which group of 3 Federal Circuit Justices makes the determination.  

Our experience before the Patent Office, reflects the same chaos.  Whether an application’s claims are patent eligible depends on which Examiner examines the application.  If this sounds “arbitrary and capricious” it ought to.  Unfortunately, potentially valuable intellectual property (IP) rights should not turn on a flip of the coin.  

So, the question arises, what should business method-based Entrepreneurs do in this unpredictable environment?  For those already a “little bit pregnant” with a pending application, we usually recommend staying the course and fighting the issue while hoping that the full Federal Circuit will straighten out the mess.  For those without a pending application yet, we usually recommend filing a provisional patent application at some point and praying for the same clarifying decision in the meantime.  

For there is one thing that can be predicted with certainty, if you do not file an application (or instead let one go abandoned) you will not get a patent.  Everything else is, unfortunately and with regard to business method patent eligibility, a crap shoot.  

But, do not be too discouraged for in my humble opinion, this situation cries out for a clarifying decision.  If not, many otherwise worthy patent applications are going to fall prey to Enfish.

We at the Villhard Patent Group would welcome an opportunity to discuss the patent eligibility of your business (and/or software) method ideas.  Please see for more information about us or call (512) 897-0399 to arrange a complimentary initial consultation.