The recent decision in Visual Memory LLC v NVIDIA Corp. (Visual Memory) was unusual: the US Federal Circuit (FC) reversed a District Court patent eligibility holding, highlighting the need for technical advantages in patent specifications to avoid US eligibility issues and the potential advantages of US attorneys drafting more detailed specifications. Interestingly, in the long term the decision could be beneficial for UK patent litigators.
Rather than break new ground, Visual Memory logically applied the Enfish LLC v Microsoft Corp (Enfish) and Thales Visionix Inc. v United States (Thales) eligibility “guideposts”. In particular, the FC noted that the specification lays down technical benefits related to the claimed system. It was these related benefits that were important in the Judges’ final conclusion that the subject matter was patent eligible.
Visual Memory follows Enfish and Thales by finding the claims relate to eligible subject matter because the judges saw the invention as focused on improvements with technical advantages. But the decision was not unanimous. Judge Hughes, author of the Enfish decision, dissented.
Judge Hughes suggested that everything in the claim only described generic computer components. This is critical to the first step of the test in Alice Corp v CLS Bank International (Alice), when determining whether the invention relates to an abstract idea.
The other judges disagreed because this feature was not pertinent to the consideration required under Step 1 of the Alice test, which is concerned with the innovation envisioned by the inventors and whether that innovation, as reflected in the claims and specification, is patent eligible or an abstract idea. Crucially, the judges placed greater emphasis on what the inventors identified the invention as relating to, while Hughes focused more on the overall technical disclosure.
From a European perspective, less concern arises about how inventors identify their invention. Instead, lawyers focus on technical advantages associated with features that differ between the claimed invention and the artificial “closest prior art.”
With uncertainty over Alice, US patent practitioners are taking note of Hughes, trying to anticipate whether his view may become the majority by potentially including more technical detail when drafting. Firstly, this is good news for European prosecutors. Struggles with EPO patent eligibility often come from having to explain that features of a claimed invention are technically advantageous, or ‘have a technical effect’, when the description provides little explanation of the invention or its advantages.
US drafting practices change slowly. But as applications arrive, European practitioners will see a shift that should mitigate fundamental problems relating to EPO patent eligibility, improving patentees’ chances of avoiding rejections and reducing European prosecution costs. For UK patent litigators, it will be several years before we witness any tangible impact. However, if improvements are seen in prosecution of US originating software patents before the EPO, this could eventually result in more software patents being granted in Europe with claims having potentially broader and more commercially valuable scope.