Enfish Decision Breathes New Life Into Computer-Implemented Patents

May 13, 2016 | Intellectual Property News

In the Supreme Court’s pivotal decision in Alice Corp. Pty. Ltd. v. CLS Bank, Int’l (2014), computer-implemented inventions were considered unpatentable if they were directed to an abstract idea. Since that time, many applications have been rejected and issued patents invalidated on the grounds that they were directed to an abstract idea and therefore contained unpatentable subject matter. In Enfish, LLC v. Microsoft Corporation (2016), the Federal Circuit Court of Appeals issued a clarifying decision that should stem the tide and provides an important clarification to support the patentability of many computer-implemented inventions.

In setting up a two-stage inquiry for patentability of such inventions, the Supreme Court declared: “We must first determine whether the claims at issue are directed to a patent ineligible concept.” That formulation plainly contemplates that the first step of the inquiry is a meaningful one, i.e., that a substantial class of claims are not directed to a patent-ineligible concept. The “directed to” inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon—after all, they take place in the physical world. Rather, the “directed to” inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether “their character as a whole is directed to excluded subject matter.” The Federal Circuit then concluded that “We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract.” According to the formulation of Enfish, the issue should be determined by a close evaluation of the claims. As the Court held, “Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.”

The patentability of computer-implemented inventions is still very much a case-by-case issue, but after the decision of Enfish there is once again room for pursuing such patents, particularly where the claims are written to be more particular to the specific functionality of the improvement, rather than generally to a broad or abstract idea that merely happens to be implemented on a computer.