The USPTO’s Response to Alice Corp. v. CLS Bank

Six days after the Supreme Court handed down its opinion in Alice Corp. v. CLS Bank, which invalidated certain patents disclosing “a computer-implemented scheme for mitigating ‘settlement risk,’” the USPTO issued its own Preliminary Examination Instructions. (An overview of the Alice Corp. decision can be found here.)

The USPTO’s instructions are significant in several ways. First, the USPTO believes that the Alice Corp. decision “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.” Although the Court found that the computer systems and computer-readable storage media in Alice Corp. did not transform the patent-ineligible abstract idea into a patent-eligible invention, the Court did not eliminate software patents as a class. [1]

Next, the USPTO gives guidance on how to apply the two-step analysis set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc. by providing some examples. For the first step, “determine whether the claim is directed to an abstract idea,” the instructions list four types of abstract ideas: [2]

  • Fundamental economic practices;
  • Certain methods of organizing human activities;
  • An idea of itself; and,
  • Mathematical relationships / formulas.

If the claim is directed to an abstract idea, the second step is to determine whether the claim contains an “inventive concept” sufficient to transform the abstract idea into patent-eligible subject matter. Examples of limitations that may be enough to qualify as an “inventive concept,” and therefore render the claim patent-eligible include:

  • 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.

Finally, the instructions unify the patent subject matter analysis in the Patent Office in two ways. First, the two-step Mayo analysis applies to not only claims with abstract ideas, but claims with laws of nature and natural phenomena. Second, the USPTO clarifies that the same two-step analysis applies to both process claims and product claims. [3]

Although the USPTO’s instructions appear to direct the examiners to reject a claim that fails the two-step Mayo analysis, while also directing the examiners to “proceed with examination of the claim, regardless of whether a rejection under § 101 has been made,” the instructions provide a roadmap for applicants to draft claims directing to software or business methods to avoid rejections under Section 101. They may also lead to issuance of more focused software and business method claims.

[1] Three justices opined that no business method patent is patent eligible under Section 101. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. ­­­__ , 2014 WL 2765283 (2014) (Sotomayor, J., concurring).

[2] The Alice Corp. court did not “delimit the precise contours of the ‘abstract ideas’ category . . . .” 573 U.S. ­­­__ (slip op., at 10).

[3] The USPTO’s prior guidance applied a different analysis to product claims involving abstract ideas than to process claims.