Question: If the USPTO denies me a patent because my invention is related to software, can I have success appealing to the Patent Trial and Appeals Board (PTAB)?
Answer: Yes. Many applicants for software patents have successfully obtained a patent by appealing to the PTAB after the USPTO rejected their patent application.
The PTAB is the judicial body responsible for deciding contested issues of patentability between examiners and applicants. Among others, decisions like Ex parte Palmer and Ex parte Steve Bush indicate that the PTAB will help applicants with software inventions obtain patents.
The decision Ex parte Palmer provided that claims directed to a method of playing a card game in an electronic gaming environment are patentable. Throughout the decision, the PTAB emphasized that the electronic environment for the card game does not make the invention unpatentable.
The PTAB also summarily reversed an examiner’s rejection in the decision Ex parte Steve Bush, providing that a computer-based method performed by one or more computers is patentable.
These decisions indicate that the PTAB is prepared to overrule the USPTO to help inventors protect their software through patents.