On June 25, 2014, the USPTO issued a memorandum regarding revised examination instructions as a result of the Supreme Court decision in Alice Corp. v. CLS Bank International. The instructions provide a new framework for assessing the subject matter eligibility (under 35 U.S.C. § 101) of claims involving abstract ideas in light of the Alice Corp. decision. The USPTO noted that the Supreme Court applies the test set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc. to assess the subject matter eligibility of all claims relating to laws of nature, natural phenomena, and abstract ideas. However, the USPTO previously only applied the Mayo test when examining claims relating to the laws of nature, whereas claims involving abstract ideas were assessed using the framework provided in Bilski v. Kappos. The updated examination instructions therefore state that, following Alice Corp., claims relating to an abstract idea should be analyzed using the two-part framework set forth in Mayo.
The first part of the Mayo test is to determine whether the claims involve an abstract idea. The USPTO provides several examples of abstract ideas, including “fundamental economic practices; certain methods of organizing human activities; ‘[a]n idea of itself’; and, mathematical relationships/formulas.” If the invention does not include an abstract idea, the remainder of the patentability examination proceeds outside of the Mayo framework. However, if the invention involves an abstract idea, the USPTO notes that the invention may still be eligible for patent protection. Such inventions must therefore be further examined under part two of the Mayo framework.
In the second part of the Mayo test, the claims are reviewed to determine whether they amount to “significantly more” than an abstract idea. The USPTO lists several examples of inventions that qualify as “significantly more” than an abstract idea, such as “improvements to another technology or technical field; 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.” Further, the USPTO also lists several examples of limitations that do not qualify as “significantly more” than an abstract idea, including “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.” As a result, if the invention does not contain any limitations that demonstrate an application of the abstract idea resulting in claims that amount to significantly more than the abstract idea, the claims fail the second part of the Mayo test. Otherwise, the claims are determined to relate to patent-eligible subject matter.
The good news for those seeking patents is that it appears that the USPTO is taking a narrow view of the Alice Corp. decision. The USPTO guidelines emphasize that Alice Corp. does not create a per se excluded category of subject matter for software or business method patents. The USPTO guidelines also state that decision does not impose special requirements for eligibility of software or business patents. Despite the narrow view, there will probably be an increase in subject matter rejections as the examiners start to apply the guidelines. As a practical matter, software and business method patent applications should include at least one hardware figure along with a description of how the disclosed methods may be implemented in hardware. Doing so leaves room for applicants to argue that the disclosure provides an improvement to the functioning of a computer itself. Additionally, the applications should include disclosure on producing a benefit or result using the software or business method. As discussed in the guidelines, the described result should be more than merely applying the method. Rather, if the applicant describes particular uses for the method to produce tangible results, she should be able to argue that the method results in an improvement to another technology or technical field.
The decision rendered in Alice Corp. does not appear to be the death knell for software and business patents. Particularly in light of the USPTO guidelines, applicants are left with many avenues to present software and business method patents as patent-eligible subject matter.