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Patentable Subject Matter: The USPTO’s Guidelines after Alice

An Article in Schott, P.C.’s IP Law For Start-ups Series
By Stephen B. Schott

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As promised when the Supreme Court issuedAlice, the answer to the question “What is patentable?” will be developing over the next several years. But just a few weeks removed from the decision, the USPTO has issued the first of its guidelines for how it will deal with applications after Alice.

The USPTO Guidelines

Shortly after the decision, the USPTO issued preliminary examination instructions to its examiners to help them follow Alice. This often happens as the USPTO adjusts its practices in the wake of a significant case or change in the law.

The USPTO’s instructions reiterate Alice’s two step test for determining patentability.

Step 1. “Determine whether the claim is directed to an abstract idea.”

The USPTO gives a few examples of “abstract ideas” such as “fundamental economic practices, certain methods of organizing human activities, an idea of itself, and mathematical relationships/formulas.”

Step 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. In other words, 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? Consider the claim as a whole by considering all claim elements, both individually and in combination.”

Claim limitations referenced in Alice that may be enough to qualify as “significantly more” when used with an abstract idea 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.

Claim limitations referenced in Alice that are not enough to qualify as “significantly more” when used with an abstract idea include:

  • 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.

Former Federal Circuit Court of Appeals Chief Judge Michel stated that this “something more” test is “vague” and  leaves some patent owners and their lawyers “put to sea with no chart.” The USPTO’s guidelines can’t correct that defect in the Alice opinion, but they at least give us some initial guidance.

As litigation and prosecution develop post-Alice, I will provide more updates on the patentable subject matter standard. [Update 1: First Federal Circuit case finding software patentable afterAlice]

If you have questions, contact me.

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