Abstract Ideas and the USPTO

The Patent Office’s First Take on CLS Bank v. Alice

On 25 June 2014, new examination guidelines (the Guidance) from the United States Patent Office were issued in response to the Supreme Court’s decision in Alice Corp. v. CLS Bank International. This case addressed the subject matter eligibility under 35 U.S.C. § 101 of claims related to an abstract idea.  The Guidance provides preliminary instructions for analysing claims involving an abstract idea and its applicability to technology areas, including the software and business method fields, which are worthy of attention from applicants.

 A final Guidance has yet to be issued, but the preliminary Guidance presently governs prosecution and provides insight into the Patent Office’s own understanding of the case law and how it will be applied during the day to day prosecution of applications.

The Guidance includes a test for claims that are directed to one of the four statutory eligible subject matter categories – process, machine, manufacture or composition of matter. This two step test involves:

  1. determining if the claim is directed to an abstract idea
  2. if an abstract idea is present in the claim, determineing whether any element or combination of elements ensures that the claim is directed to significantly more than the abstract idea itself.

The details of how to apply the test will be expanded upon in the final Guidance, likely using examples similar to those found in the Patent Office’s other guidelines pertaining to patent eligibility, such as the recent guidelines on examination of claims involving laws of nature and natural products.

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