Dissecting the Alice Case: Six Years in the Making
It has been six full years since the decision in Alice Corp. v CLS Bank, 134 S.Ct. 2347 (2014), which shook the world of United States patent law and left many patent owners, examiners and practitioners reevaluating their views on what is patentable. Since Alice, the United States Patent and Trademark Office (USPTO) has actively tried to sync up its approach to determining subject matter eligibility with the approach taken by the Supreme Court, as well as to help clarify its examination approach by providing guidance to the patent community. Today, while some confusion remains, thanks to the USPTO’s efforts and a working knowledge developed over time, we have come a long way from the initial disarray caused by the 2014 Alice case.
Alice and the Supreme Court
In the 2014 Alice case, the United States Supreme Court was tasked with determining whether patent claims directed at a computer-implemented electronic escrow service were eligible for patent protection under United States patent law. While 35 U.S.C. § 101 lays out that patentable subject matter includes “new and useful process, machine, manufacture, or composition of matter,” there have long been judicial exceptions to what is patentable, which include, among others, the ineligibility of abstract ideas. The Court relied on the two-step Mayo framework to resolve the issue of whether the computer-implemented services in Alice were based on patent-ineligible abstract ideas.
The first step of the Mayo framework requires determining whether a patent claim contains an abstract idea (such as an algorithm, method of computation or other general principle). After determining that the Alice claims did in fact involve abstract ideas, the Court turned to the second step of the framework, which requires determining whether a patent adds to the abstract idea “something extra” that embodies an “inventive concept.” The Court determined that the patent at issue failed to add to the abstract idea, noting that “merely requiring generic computer implementation fails to transform an abstract idea into a patent-eligible invention.”
See how to overcome Alice–based Section 101 rejections.
USPTO Guidance After Alice
The decision from the Alice case led to years of confusion and disarray. With the implications of the case still uncertain, many feared that the validity of their patents would no longer be upheld, and many were left not knowing how to proceed in patent prosecution in light of the decision. The USPTO issued interim examination guidance in 2014, but many questions still remained, and updates to the guidance were issued in 2015 and then again in 2016.
More recently, the USPTO issued the 2019 Revised Patent Subject Matter Eligibility Guidance (accessible here), which enumerates and provides clarification on certain groups of abstract ideas, such as “mathematical concepts,” “certain methods of organizing human activity” and “mental processes.” The 2019 guidance also creates a two-prong inquiry for determining patentability exceptions, which has received positive feedback and aligns well with the Supreme Court’s approach in Alice.
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To learn more about the USPTO’s approach to determining subject matter eligibility, visit the USPTO website for additional resources. Also, check out the LexisNexis® Intellectual Property webinar, “Dissecting Alice at 5—The Good, Bad & the Ugly,” for guidance and opinions from experts including the USPTO’s commissioner for patents.
IP software tools―such as LexisNexis PatentOptimizer®―can help patent drafters choose their words wisely. These tools can be used to flag prior usage of certain terms, identify on-point case references, suggest alternative terms for the application, alert you to terms or phrases that could be problematic in the courts and identify and rectify any claim anomalies. Created by patent attorneys for patent attorneys, PatentOptimizer® streamlines patent analysis and serves as an important Section 101 quality control check when drafting patent applications.
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