Transcript The CLS Bank Decision

Examiner Guidelines After
Alice Corp.
How Much “More” is “Significantly More”?
August 21, 2014
Overview of CLS Bank Int. v. Alice Corp.
• Alice Corp. claims system and method for
reducing risk that a party to a deal won’t pay.
• SCOTUS opinion:
– This is a “computer-implemented scheme for
mitigating ‘settlement risk’ . . . by using a thirdparty intermediary.”
– claims are drawn to “the abstract idea of
intermediated settlement”
– “merely requiring generic computer
implementation fails to transform that abstract
idea into a patent-eligible invention.”
USPTO Response
• Most recent USPTO memo to Examiners:
Includes preliminary instructions for analyzing
claims
• USPTO says Alice changes the process in two
ways:
– Must now use the same analysis for all types of
judicial exceptions (not Bilski for abstract ideas
and Mayo for laws of nature)
– Now use same analysis for all categories of
claims involving abstract ideas (not “tangibility
test” for products and Bilski for processes)
Post Alice Examination Analysis
• Determine whether claim is directed to
statutory category: process, machine,
manufacture, composition of matter
• Engage two-step Abstract Idea Test from
SCOTUS opinion:
– Determine if claim falls into a judicial exception:
Law of nature, natural phenomenon, abstract
idea
– Determine whether claim is patent eligible
Part 1: Is the claim directed to an Abstract
Idea?
• Does it monopolize “the basic tools of science
and technological work?”
• Does it “impede innovation more than it would
promote it?”
• Does it “integrate the building blocks of human
ingenuity into something more by applying
the abstract idea in a meaningful way?”
• Is it “fundamental to economic practices?”
• Is it “an idea itself” that is to say “a principle,
an original cause, a motive?”
• Is it a mathematical formula?
Part 2: Is the Claim Patent Eligible?
• Does the claim recite “significantly more” than
the abstract idea itself?
– Are there “other limitations in the claim that show
patent-eligible application of the abstract idea?”
– Does it contain only a “mere instruction to apply
the abstract idea?
• How much more is “significantly more”?
Part 2: Examples of “more” that may be
“significant” enough
• Does the claim recite an “improvement” to
“another technology or technical field?”
• Does it recite “improvements in the function of
the computer itself?”
• Does it recite “meaningful limitations beyond
generally linking the use of an abstract idea to
a particular technological environment.”
Part 2: Examples of “more” that may not be
“significant” enough
• Does the claim simply add “apply it” or
equivalent language to the abstract idea?
• Does the claim simply recite “implementing”
the idea on a computer?
• Does the claim require no more than a generic
computer to perform “generic computer
functions that are well-understood, routine,
and conventional activities previously known
to the industry?”
After the two-step analysis. . .
• Continue regardless of outcome of abstract
idea analysis
• Determine utility and double patenting under
101, and non-statutory double patenting
• Determine patentability under 102, 103, and
112
Other Guidance
• “Consider the claim as a whole by considering
all claim elements, both individually and in
combination.”
• “The basic inquiries to determine subject
matter eligibility remain the same as explained
in MPEP 2106(I).”
• Business method/software applications not
patent ineligible per se
Recent Developments
• The USPTO is withdrawing some notices of
allowance
• Some withdrawn after issue fee was paid (!)
– “We withdrew notice of allowances for some of
these applications due to the presence of at least
one claim having an abstract idea and no more
than a generic computer to perform generic
computer functions.”
– “Applicants who had already paid the issue fee
for applications withdrawn from allowance may
request a refund . . .”
Practice Tips
• In the near future: Recommend clients pay
issue fee early for software applications!
• SCOTUS language suggests movement
toward European “technical feature” to solve a
“technical problem” standard:
– Does the claim recite an “improvement” to
“another technology or technical field?”
– Does it recite “improvements in the function of
the computer itself?”
Practice Tips Cont.
• No clear guidance on what an “abstract idea”
is. SCOTUS does not define it.
• Muddies “abstract idea” with 102/103: How is
a “conventional activity previously known to
the industry” determined without considering
prior art?
• Expect more (not necessarily better) rejections
on 101 issues
• Remains to be seen how much “more”
recitation CAFC, DC, or Examiners will require