TAKEAWAY: A software patent that claims a specific technological improvement that separates the invention from the prior art, the claimed invention is not abstract and is patent eligible under Section 101.
On November 15, 2019, the U.S. Court of Appeals for the Federal Circuit reversed an ineligibility finding and issued a precedential decision in Koninklijke KPN NV v. Gemalto M2M GmgH, holding that when a software patent claims a specific technological improvement that separates the invention from the prior art, the claimed invention is nonabstract and patent eligible under Section 101.
On appeal, the appellee argued that the District Court did not err in finding the patent claims ineligible, because, inter alia, the claims “fail to recite a last application step that uses the generated check to actually perform error detection.” The Federal Circuit disagreed, finding that “[a] claim that is directed to improving the functionality of one tool… that is part of an existing system… does not necessarily need to recite how that tool is applied in the overall system… in order to constitute a technological improvement that is patent eligible.”
The opinion serves as an important reminder to patent practitioners: because “pending claims [are] given their broadest reasonable interpretation consistent with the specification,” it is important to clearly articulate in a patent application any improvement(s) that an invention provides to prior art systems or methods. Such disclosure can be extremely useful to inform claim interpretation and patent eligibility arguments presented in responses to Office Actions rejecting claims under Section 101.
This opinion aligns with the October 2019 Update to the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) published on January 7, 2019 (84 Fed. Reg. 50), and with MPEP 2106.04(a) and 2106.05(a), which informs that Examiners should analyze the “improvements” consideration by evaluating the specification and the claims to ensure that a technical explanation of the asserted improvement is present in the specification, and that the claim reflects the asserted improvement.