July 1, 2016

Resurfacing of Preemption for Patent-Eligibility of Software Inventions – The Bascom Decision

By Donald J. Daley, Principal; Andrew M. Waxman, Principal

Harness the Lesson: It seems the preemption argument in favor of patent-eligibility has resurfaced as an argument for patent-eligibility of claims directed to software-related subject matter if the claimed invention does “does not preempt all uses” of the generic concept, and instead is a specific software-based implementation.*


Post Alice, the Court of Appeals for the Federal Circuit (CAFC) has indicated that for patent eligibility, a patent applicant pursuing claims directed to software-related subject matter needs to focus on “technical solutions” to internet/computer problems (DDR Holdings – 2014); and further provided alternatives where even “software solutions” were held to be both technical and non-abstract improvements of computer technology (Enfish – May 12, 2016).  Now in Bascom, the CAFC has indicated that abstract generic concepts such as data filtering may still be patent eligible if the claimed invention “does not preempt all uses” of the generic concept, and instead is a specific software-based implementation.  This mention of preemption may help applicants obtain patents in the future if the patent applicant can define a broad concept and then argue that their specifically claimed technology-based solution does not preempt all uses of the concept.

Based upon the previous law, some considered data filtering to be abstract and difficult to patent in the U.S.  In Bascom, while the concept of “filtering data on the Internet” was held to be abstract, the inventive concept harnessed a technical feature of network technology in a filtering system, by associating individual accounts (on a local computer) with their own filtering scheme and elements, with the filtering system being located on an ISP server.  The unique way that the filtering was claimed was held to “not preempt all uses” of the generic concept of filtering data on the Internet.  By taking a known concept of “data filtering” and making it more dynamic and efficient, the claimed invention in Bascom was held to represent a software-based invention that improved the performance of the computer itself.

* Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, __ F.3d __ (Fed. Cir. 2016)