USPTO Issues Guidance to Examiners Following Alice v. CLS

Posted Thursday, June 26, 2014.

Last week, the U.S. Supreme Court issued its opinion in Alice Corporation v. CLS Bank, in which patent claims to a computer-implemented invention directed to the financial application of mitigating settlement risk were invalidated. (Read my blog about the decision here.) Leading up to the decision, commentators expressed concern that the Court could rule that software was not a patent-eligible category. But the actual opinion, as I mentioned in my previous blog post, left room for software and other computer-implemented inventions to be patented.

Subsequently, the U.S. Patent and Trademark Office is now issuing preliminary instructions to its patent examiners to help them decide whether claims proposed by applicants are in fact patent-eligible, based on the Alice v. CLS decision. (Read the memo written by Andrew Hirshfeld, the Deputy Commissioner for Patent Examination Policy at the USPTO, here.) That guidance confirms the USPTO also believes that the Court did not take away patenting of software as a rule. The USPTO wrote, “Notably, Alice Corp. neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods.”

The memo continues by providing an analytical framework for patent examiners for determining whether a computer-implemented invention of the kind in dispute during Alice v. CLS is patent-eligible. There is a two-part test first set out by the Supreme Court in Mayo v. Prometheus in 2012 (Read my blog post about Mayo v. Prometheus here.) The test involves determining whether the claimed invention is directed to an abstract idea (example: fundamental economic practices) and if so, determining whether the claim adds “significantly more” (example: meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment). If the claimed invention recites an abstract idea, and the remainder of the claim does not add significantly more, then the claim may be deemed patent-ineligible (i.e. rejected under 35 U.S.C. §101).

The memo concludes by instructing examiners to follow the determination of patent-eligibility with examination of the application’s patent claims for novelty and non-obviousness.

In short, patenting of computer-implemented inventions, and software particularly, has not been eliminated by the Supreme Court. In Alice v. CLS, the Court has merely reaffirmed that inventions directed to an abstract idea, whether they be medical tests that rely on known relationships between a drug and a concentration of a substance in blood (Mayo v. Prometheus), or computer-implemented software or systems which carry out escrow-like transactions, are not patent-eligible.

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