Court ruling led to quick changes at patent office

The Supreme Court’s decision to toss out some software patents earlier this year led to a swift change of operations at the U.S. Patent and Trademark Office (PTO), the agency’s deputy director said on Wednesday.

Michelle Lee told the House Judiciary subcommittee on Intellectual Property that the high court’s June decision caused an immediate flurry of activity.

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“It does affect the examination of cases before us and as soon as the ruling came down we were in a position at the PTO where we had to offer guidance to our examiners,” she told lawmakers.

New preliminary guidance on software patents was issued “within days” of the ruling on Alice Corp. v. CLS Bank, she said, and the patent office is currently asking for public input on how to finalize those guidelines. Final guidance should be issued in September or October, she said, at which point all examiners will be trained on the new rules.

“We understand that we want to issue it promptly but we also want to be accurate about our guidance,” Lee said.

In the meantime, patent examiners are going back over applications that have not yet been finalized to make sure that they all would pass muster under the court's new interpretation of the law.

“We wouldn’t want to issue patents that are not in compliance with the current case law,” she told lawmakers.

“What we have in our pipeline is a number of cases that may be or are affected by the changes in law by the Alice-CLS case,” she added, though could not say how many cases there were. “In that instance, before a patent number has been provided, it’s incumbent on us – before the patent leaves the office – to apply the current law,” Lee added.

The closely watched decision last month tossed out some software patents that merely added computers to an abstract idea.

The court declined to invalidate all software patents, however, a possibility that had the software industry nervous.