USPTO Issues Preliminary Guidance on Patentability Based on Alice Corp.July 29, 2014

On June 25, 2014 the USPTO Deputy Commissioner for Patent Examination Policy released aMemorandum to the Patent Examining Corps that provides examiners with preliminary instructions related to subject matter eligibility of claims involving abstract ideas under 35 U.S.C. § 101 in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International. The memo provides the following guidance with respect to the application of the Mayo framework to the examination of claims involving abstract ideas in light of the Alice decision:

(1) Alice Corp. establishes that the same analysis should be used for all types of judicial exceptions, whereas prior USPTO guidance applied a different analysis to claims with abstract ideas (Bilski guidance in MPEP 2106(II)(B)) than to claims with laws of nature (Mayo guidance in MPEP 2106.01).

(2) Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims), whereas prior guidance applied a different analysis to product claims involving abstract ideas (relying on tangibility in MPEP 2106(II)(A)) than to process claims (Bilski guidance).

The memo then explains that, despite these changes, the basic inquiries and examination procedures as to subject matter eligibility remain the same after the Alice decision.

The instructions also set out a "Two-Part Analysis for Abstract Ideas." First, the examiner is to determine whether the claim is directed to an abstract idea such as "fundamental economic practices," "certain methods of organizing human activities," "an idea of itself," or "mathematical relationships/formulas." If the examiner concludes that the claim is directed to an abstract idea, the examiner must then 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." The instructions provide examples of what would qualify and what would not qualify as "significantly more" as referenced in the Alice decision:

Would qualify: Improvement to technology or technical field, improvements to functioning of computer itself, and "meaningful limitations."

Would not qualify: Adding the words "apply it," and requiring no more than a generic computer to perform generic computer functions.

The instructions direct examiners to reject claims under 35 U.S.C. § 101 as being directed to non-statutory subject matter if they do not amount to "significantly more" than the abstract idea.

These examination instructions are only initial guidelines, and will be updated and modified as needed after additional consideration of the decision and public feedback. Accordingly, the USPTO has issued aRequest for Comments and Extension of Comment Period on Examination Instruction and Guidance Pertaining to Patent-Eligible Subject Matter that is open through July 31, 2014.