US Patent Office Issues Guidance on Patentability of Software

The United States Patent Office sent a November 2, 2016, Memorandum to the Patent Examining Corps discussing two recent Federal Circuit decisions and the rules on patent eligibility for computer software. The decisions are McRO, Inc. v. Bandai Namco Games America Inc. and BASCOM Global Internet Services v. AT&T mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). McRO is significant because it reminds patent examiners when examining a patent claim, that they must not be overgeneralize or simplify it into its “gist, and that an improvement in computer technology is not limited to improving the operation of a computer. BASCOM is significant because the considerations of elements showing an inventive feature should look for additional elements in combination as well as individually. It also notes that the absence of preemption may indicate the claim is not directed to a judicial exception.


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