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Additional §101 Insight for Software Patent

     A recent United States Court of Appeals for the Federal Circuit decision has given hope to those seeking patent protection for software and computerized processes. In McRO, Inc. v. Bandai Namco Games America Inc. et al., the Federal Circuit reversed the lower court’s ruling that patents including lip-sync technology were invalid for claiming an abstract idea.

     U.S. patent law states that “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” qualifies as patent-eligible subject matter. See 35 U.S.C. §101. However, the courts have created some exceptions to the literal scope of patent eligibility. In Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the U.S. Supreme Court ruled that mere computer automation of abstract processes are not patent eligible subject matter. One of the issues in McRO was that the claims “simply use[d] a tool to automate conventional activity.”

     In McRO, the Federal Circuit held that the claimed automated process allowed “computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” McRO, Inc. v. Bandai Namco Games America Inc. et al., No. 15-1080, slip op. at 22 (Fed. Cir. Sept. 13, 2016). One notable takeaway from McRO is that, in contrast with previous Federal Circuit decisions since Alice, claimed differences in the process such that it creates an otherwise non-existent process may overcome the restrictions laid out in Alice. The ruling in McRO indicates that software inventions may be patent eligible when specifically claiming unconventional steps that differ from when performed by a computer.

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