Patent Eligibility of Software Related Inventions

In a recent newsletter¹ we reported on draft examination guidelines of software-related inventions. The Commissioner has now issued a final version of these Examination guidelines². As we expected, this version does not include significant changes over the draft version that was issued in January 2012.

While most of the amendments do not substantially alter the former draft guidelines, it is noteworthy that the current guidelines do clarify that separate examination should be applied to (i) whether the invention falls in a field of technology, and (ii) whether the invention is novel and constitutes inventive step.

In addition, it appears that the current guidelines have relaxed the standards for classifying an invention which concerns automation of a manual process as one having concrete technological character (and thereby being regarded as an invention in a “field of technology”).

Finally, previous examples 3, 5 (that define claims that do not possess concrete technological character) and 12 (that define a claim that possesses concrete technological character) which were provided in the previous draft version of the examination guidelines³ were deleted.