USPTO Issues post-Alice Software Patent Examination Guidelines
The USPTO has issued preliminary guidelines for examination of software patent applications, and other patent applications, after the Supreme Court’s decision in Alice v. CLS Bank. The Alice Supreme Court decision is discussed in another post.
The guidelines start by summarizing the Alice decision as follows:
The Court determined that Alice Corp.’s claims to methods were ineligible because “the claims at issue amount to ‘nothing significantly more’ than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer.” Alice Corp.’s claims to computer systems and computer-readable storage media were held ineligible for substantially the same reasons, e.g., that the generically-recited computers in the claims add nothing of substance to the underlying abstract idea. 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 guidelines go on to state that The Supreme Court made clear in Alice Corp. that it applies the framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. _ (2012) (Mayo), to analyze all claims directed to laws of nature, natural phenomena, and abstract ideas for subject matter eligibility under 35 U.S.c. § 101. The Mayo framework is currently being used by the USPTO to examine claims involving laws of nature, but had not been used for claims involving abstract ideas. Therefore, the new examination guidelines differ from prior USPTO guidance in two ways:
1) The Mayo analysis should be used for all types of judicial exceptions, whereas prior USPTO guidance applied a different (i.e., Bilski) analysis to claims with abstract ideas 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) than to process claims (Bilski guidance).
For purposes of the preliminary guidelines, only claims that involve abstract ideas are
addressed, since the USPTO’s current guidance for claims that involve laws of nature/natural phenomena already uses the Mayo framework.
The examination guidelines state that, following Alice Corp., Examiners are now to analyze all claims (product and process) having an abstract idea using the following two-part analysis set forth in Mayo :
Part 1: Determine whether the claim is directed to an abstract idea.
Part 2: If an abstract idea is present in the claim, 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.
As emphasized in Alice Corp., abstract ideas are excluded from eligibility based on a concern
that monopolization of the basic tools of scientific and technological work might impede
innovation more than it would promote it. At the same time, the courts have tread carefully in
construing this exclusion because, at some level, all inventions embody, use, reflect, rest upon
or apply abstract ideas and the other exceptions. Thus, an invention is not rendered ineligible
simply because it involves an abstract concept. In fact, inventions that integrate the building
blocks of human ingenuity into something more by applying the abstract idea in a meaningful
way are eligible.
The guidelines provide examples of abstract ideas, referenced in Alice Corp.:
-Fundamental economic practices ;
-Certain methods of organizing human activities;
-An idea of itself; and
-Mathematical relationships/formulas
Claims that include abstract ideas like these should be examined under Part 2 to determine whether the abstract idea has been applied in an eligible manner.
For Part 2, examiners are to determine whether there are there other limitations in the claim that show a patent-eligible application of the abstract idea, e.g., more than a mere instruction to apply the abstract idea. They are to consider the claim as a whole by considering all claim elements, both individually and in combination.
The guidelines provide the following non-exclusive examples of limitations referenced in Alice Corp. that may be enough to qualify as “significantly more” when recited in a claim with an abstract idea:
-Improvements to another technology or technical fields;
-Improvements to the functioning of the computer itself; and
-Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.
The guidelines provide the following non-exclusive examples of limitations referenced in Alice Corp. that are not enough to qualify as “significantly more” when recited in a claim with an abstract idea:
-Adding the words “apply it” (or an equivalent) with an abstract idea, or mere instructions to implement an abstract idea on a computer; and
-Requiring no more than a generic computer to perform generic computer functions that
are well-understood, routine and conventional activities previously known to the industry.
If there are no meaningful limitations in the claim that transform the exception into a patent
eligible application such that the claim amounts to significantly more than the exception itself, the claim should be rejected under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
Interestingly, and contrary to my prediction in the Alice summary, after conducting the two-part analysis, examiners are instructed to proceed with examination of the claim, regardless of
whether a rejection under § 101 has been made, 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 (indefiniteness, novelty, and obviousness).