Submit to Digest

USPTO’s Post-Alice Guidance on Patenting Claims Involving Abstract Ideas

By Max Kwon – Edited by Sarah O’Loughlin USPTO Memo on Alice Corporation Pty. Ltd. V. CLS Bank International, et al. (June 25, 2014). Memorandum. IdeaIn response to the Supreme Court’s recent decision to invalidate four software patents in Alice Corp. Pty. Ltd. v. CLS Bank Int’l et al., No. 13-298 (783 U.S. ____ June 19, 2014) (“Alice”), Andrew H. Hirshfeld, Deputy Commissioner for Patent Examination Policy for the U.S. Patent and Trademark Office (USPTO), issued a memorandum to the Patent Examining Corps “to provide preliminary instructions…relating to subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas, under 35 U.S.C. § 101.” In the memorandum, Hirshfeld stated that in accordance with Alice, the USPTO will now require “all claims directed to laws of nature, natural phenomena, and abstract ideas for subject matter eligibility under 35 U.S.C. § 101” to be analyzed under the framework outlined in  Mayo Collaborative Services v. Prometheus Laboratories Inc., 566 U.S. ____ (2012) (“Mayo”). Id. at 1. Under the Mayo analysis, patent examiners must first determine whether the claim involves an abstract idea. Claims that do not involve an abstract idea are to be analyzed for “compliance with the other statutory requirements for patentability.” Id. at 3. Claims that do involve abstract ideas are further analyzed to “determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.” Id. (emphasis in original). Citing Alice, Hirshfeld notes that improvements to technology, technical fields, or to the functioning of a computer “may be enough to qualify as ‘significantly more’” whereas “mere instructions to implement an abstract idea on a computer” or requiring a generic computer to perform routine, generic computer functions do not qualify. Id. Claims that do not qualify are to be “rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.” Id. at 3. After conducting the Mayo analysis, patent examiners are “to determine patentability in accordance with the other requirements of 35 U.S.C. § 101 (utility and double patenting), non-statutory double patenting and §§ 112,102, and 103.” Id. Although Alice did not “delimit the precise contours of the ‘abstract ideas’ category,” slip op. at 8, it did simplify the analysis for evaluating patent claims for abstract ideas by adopting the Mayo analysis for “all types of judicial exceptions” (e.g., claims with abstract ideas and claims with laws of nature) as well as “all categories of claims” (e.g., product and process claims). Memorandum at 2. However, it remains to be seen whether adopting a common test for the “abstract ideas” category will provide enough guidance to both patentees and the courts for determining what exactly qualifies as a patentable claim involving an abstract idea. Additional commentary and analysis of the USPTO’s memorandum is available at Patent Docs, Patently-O, and IP Watchdog.