Monday, August 6, 2018

Patent Eligibility for Software/Business Methods: A Potential Trail Through Death Valley

The courts have made a complete mess out of the doctrine of patent eligibility.  So if this post seems a bit muddled, that wouldn't surprise this Blogger because, so is the law.  That being said, the courts have taken the “abstract” idea exception to patent eligibility to such an absurd extreme that almost nothing can survive the “Alice” test for eligibility. It’s an “exception that ate the rule.” 
Before Alice “anything made by man under the sun” was “eligible.”  Now, potentially nothing is.  Currently, the first step in determining eligibility requires determining whether a claim is directed to an abstract idea.   But every idea is abstract.  Take fire for instance.  Fire is nothing more than some ephemeral gases, glowing in the prehistoric dark.  And, hence abstract and ineligible. 
The next step for fire, having failed the abstractedness test, is to determine whether that idea is well understood, routine, and conventional.  According to a recent precedential case (Berkheimer v HP), this step requires more than just prior art.  It requires evidence that the idea was well understood. Theoretically, if pushed, the Examiner must produce evidence that the idea was well understood and -- that evidence must go beyond lack of novelty.  But as currently used by the Patent Office, a lightening-triggered fire on the African savannah would render fire patent ineligible -- because prehistoric humans "understood" it at some level. Notwithstanding the fact that they knew nothing about how to create it manually.
At least a part of the abstractness inquiry now fits within a prior art framework.  First, if the claimed idea is found to be abstract, the Examiner must find prior art to show that the claim lacks novelty.  Then, the Examiner must find evidence that the claimed idea was well understood. Then, the inquiry goes on to obviousness. 
Of course, the courts and the Patent Office have the cart before the horse.  They first determine patent eligibility, then go on to (lack of) novelty and/or obviousness.  But, at least, there seems to be a trail emerging to get software/business method claims across the Death Valley of eligibility.

We at the Villhard Patent Goup would be happy to discuss your ideas with you.  You can find more information on us at  And you can contact us at 512-897-0399 or at  We look forward to hearing from  you. 

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