“Imagination is the only weapon in the war against reality.”

— Lewis Carroll, Alice in Wonderland

I for one thought there was a chance the Supreme Court would give us some clarity and certainty when deciding Alice Corp. v. CLS Bank International.  They did neither.  But perhaps they have set us on a viable path, which can help in finding our way to patentable subject matter in various technical fields, with the use of a little imagination.

In the digital health field, there will be a lot of innovation in the next few years that can help to bring down health care costs.  And knowing what aspects of that innovation can be protected, and how to properly do so, will be critical for building shareholder value for the companies that bring this innovation to market.  Thus, the Alice decision will need to be fully digested by innovators in the digital health space and incorporated into any plans for building an intellectual property position.

The two-part test from the Alice decision is to determine (1) whether the claim is directed to a patent-ineligible concept (i.e., laws of nature, natural phenomenon, or abstract ideas), and if so, (2) whether the claim’s elements (considered both individually and “as an ordered combination”) amounts to “significantly more” than the concept itself so as to transform the nature of the claim into a patent-eligible application of the concept.  This two-part test from Alice is really more a framework for analysis than a clearly defined rule of law.  Nonetheless, the Supreme Court has also given us some clues regarding where to look to flesh out that rule of law, and these clues do impart some clarity, if not certainty.

The basic concern that drives the Court’s exclusionary principle for patent eligible subject matter is “one of pre-emption.”  If a claim is so broad that it covers the “building blocks of human ingenuity”, this could impede innovation more than promote it, thus “thwarting the primary object of the patent laws.”  In other words, a claim that preempts essentially all uses of an abstract idea that underlies the claim would be too broad to be patent eligible subject matter since it would give the inventor a monopoly on more than she had a right to claim based on the US Constitution’s direction to promote the progress of science and useful arts.

The Supreme Court hasn’t spelled out exactly when a claim is narrow enough to avoid this issue of pre-emption, but it has indicated some examples of what might be considered “safe harbors” on this front.  Specifically, the Court has indicated that a claim recites “significantly more” than an abstract idea when the claim specifies (1) improvements to another technology or technical field, (2) improvements to the functioning of the computer itself, or (3) meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.

In some ways, this is reminiscent of the European standard, where an invention must provide a technical solution to a technical problem defined with reference to the closest prior art.  Only time will tell how theAlice rule will be applied in practice as new district court cases are decided and the US Patent & Trademark Office turns its Preliminary Examination Instructions into more detailed standard operating procedures.  But given the intent of Congress to seek harmonization of the US Patent Laws with International Patent Laws, there is a good chance that any claim that passes muster in Europe will also do so under the Alice test.

In light of this, for those in the digital health space, it will make sense to find patent attorneys that not only know their technology, but are also well versed in the European approach to claiming computer-implemented inventions.  This background knowledge, plus some creative thinking, will get you past the Alice hurdle.