In a June 30, 2014 Federal Register notice, the USPTO requested public comments by July 31, 2014  on patent subject matter eligibility under the recent Supreme Court decision in Alice Corporation Pty. Ltd. v. CLS Bank International and on the USPTO’s March 4, 2014 “Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, and Natural Products.” While some have speculated that the USPTO eventually may issue a single guidance document for all types of subject matter, the Federal Register Notice provides separate points of contact for comments relating to the eligibility of claims involving abstract ideas (under Alice) and those involving laws of nature or natural products (under Mayo and Myriad).

The USPTO’s “Preliminary Instructions” on Alice

In a Memorandum to the Patent Examining Corps dated June 25, 2014, the USPTO provided preliminary instructions to examiners “relating to subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas, under 35 U.S.c. § 101,” in view of the Supreme Court’s June 19, 2014 decision in Alice.

The Memorandum interprets the Alice decision as impacting its current subject matter eligibility guidance in two fundamental ways:

  1. Alice Corp. establishes that the same analysis should be used for all types of judicial exceptions, whereas prior USPTO guidance applied a different analysis to claims with abstract ideas (Bilski guidance in MPEP 2106(1I)(B)) than to claims with laws of nature (Mayo guidance in MPEP 2106.01).
  2. Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims), whereas prior guidance applied a different analysis to product claims involving abstract ideas (relying on tangibility in MPEP 2106(Il)(A)) than to process claims (Bilski guidance).

The Memorandum sets forth a three-step framework for evaluating claims involving abstract ideas for subject matter eligibility under § 101:

  • First determine whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
  • Next … determine whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) ….
  • [I]f so, determine whether the claim is a patent-eligible application of an exception.

(The Memorandum emphasizes the last two steps, and refers to this as a two-step analysis. However, the March 4, 2014 Laws of Nature/Natural Products Guidance set forth a similar analytical framework in a three-question flow chart.)

According to the Memorandum, this framework “supersedes MPEP 21 06(1I)(A) and 2106(11)(8).”

As set forth in the  Memorandum, “Part I” of the analysis is to “[d]etermine whether the claim is directed to an abstract idea.”

As emphasized in Alice Corp., abstract ideas are excluded from eligibility based on a concern that monopolization of the basic tools of scientific and technological work might impede innovation more than it would promote it. At the same time, the courts have tread carefully in construing this exclusion because, at some level, all inventions embody, use, reflect, rest upon or apply abstract ideas and the other exceptions. Thus, an invention is not rendered ineligible simply because it involves an abstract concept. In fact, inventions that integrate the building blocks of human ingenuity into something more by applying the abstract idea in a meaningful way are eligible.

The Memorandum highlights the following examples of abstract ideas from Alice:

  • Fundamental economic practices;
  • Certain methods of organizing human activities;
  • “[A]n idea of itself”
  • Mathematical relationships/formulas

If a claim is found to involve an abstract idea, then Part 2 of the analysis is conducted “to determine whether the abstract idea has been applied in an eligible manner.”

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.

(As I wrote previously, the Supreme Court’s careful consideration of each claim element “both individually and in ordered combination” in Alice undermines the approach laid out in the Laws of Nature/Natural Products Guidance. Hopefully the USPTO recognizes that this approach must be followed in all § 101 inquiries.)

The Memorandum highlights the following examples of claim limitations referenced in Alice that may be enough to support eligibility:

  • Improvements to another technology or technical fields
  • Improvements to the functioning of the computer itself
  • Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment

The Memorandum highlights the following examples of claim limitations referenced in Alice that may not  be enough to support eligibility:

  • Adding the words “apply it” (or an equivalent) with an abstract idea, or mere instructions to implement an abstract idea on a computer
  • 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

Of course, “[i]f there are no meaningful limitations in the claim that transform the exception into a patent eligible application such that the claim amounts to significantly more than the exception itself, the claim should be rejected under 35 U.S.c. § 101 as being directed to non-statutory subject matter.”

Submit Comments By July 31

The USPTO has requested written comments on both the preliminary instructions on Alice and the March 4, 2014 Nature/Natural Products Guidance by July 31, 2014.

Comments on the preliminary instructions on Alice may be sent by electronic mail to:

Comments on the Laws of Nature/Natural Products Guidance may be sent by electronic mail to:

Comments that apply to both may be sent to either email address.