Following on the heels of the Supreme Court’s decision in Alice v. CLS Bank, the United States Patent and Trademark Office (USPTO) issued subject matter eligibility guidelines for determining whether a patent claim amounts to “significantly more” than an abstract idea. The agency has now issued follow-on guidance in the form of eight fact patterns intended to demonstrate the abstract idea analysis in further detail. The fact patterns highlight some familiar themes that have emerged in the case law both pre- and post-Alice.

First, arbiters of patent eligibility continue to rely heavily on comparisons of the claims at hand to those in past cases. Claims which recite concepts similar to those previously found to be ineligible by the courts are likely to suffer the same fate.

Second, claims that recite fundamental economic practices (such as establishing underwriting relationships) or methods of organizing human activity (such as managing a Bingo game) are likely to be ineligible. On the other hand, claims that recite concepts that are inextricably tied to computer technology (such as removing malicious code from emails or retaining customer traffic at a website) are likely to be eligible. The same is true of claimed concepts that improve the functioning of a computer or an existing technological field (such as performing halftoning using fewer resources or extending GPS functionality to weak-signal areas).

Third, it is clear that merely reciting generic computer hardware that implements an abstract idea or a mathematical concept is not enough to clear the eligibility hurdle. The same is true of claims that recite abstract ideas implemented using only routine, conventional activity specified at a high level of generality.

This latest guidance from the USPTO should provide practitioners with a framework for crafting § 101 arguments, both for and against a finding of eligibility. In addition, the fact patterns may serve as helpful examples for stakeholders who are contemplating a patent suit, or who are deciding whether pursuit of patent protection for a particular invention is worthwhile.