Patent Examination Examiner Guidelines on Alice

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Examiner Guidelines After Alice Corp. August 21, 2014 How Much “More” is “Significantly More”?

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Patent Examination Examiner Guidelines on Alice

Transcript of Patent Examination Examiner Guidelines on Alice

Page 1: Patent Examination Examiner Guidelines on Alice

Examiner Guidelines After Alice Corp.

August 21, 2014

How Much “More” is “Significantly More”?

Page 2: Patent Examination Examiner Guidelines on Alice

Overview of CLS Bank Int. v. Alice Corp.

• Alice Corp. claims system and method for reducing risk that a party to a deal won’t pay.

• SCOTUS opinion:– This is a “computer-implemented scheme for

mitigating ‘settlement risk’ . . . by using a third-party intermediary.”

– claims are drawn to “the abstract idea of intermediated settlement”

– “merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”

Page 3: Patent Examination Examiner Guidelines on Alice

USPTO Response

• Most recent USPTO memo to Examiners: Includes preliminary instructions for analyzing claims

• USPTO says Alice changes the process in two ways:– Must now use the same analysis for all types of

judicial exceptions (not Bilski for abstract ideas and Mayo for laws of nature)

– Now use same analysis for all categories of claims involving abstract ideas (not “tangibility test” for products and Bilski for processes)

Page 4: Patent Examination Examiner Guidelines on Alice

Post Alice Examination Analysis

• Determine whether claim is directed to statutory category: process, machine, manufacture, composition of matter

• Engage two-step Abstract Idea Test from SCOTUS opinion:– Determine if claim falls into a judicial exception:

Law of nature, natural phenomenon, abstract idea

– Determine whether claim is patent eligible

Page 5: Patent Examination Examiner Guidelines on Alice

Part 1: Is the claim directed to an Abstract Idea?• Does it monopolize “the basic tools of science

and technological work?”• Does it “impede innovation more than it would

promote it?”• Does it “integrate the building blocks of human

ingenuity into something more by applying the abstract idea in a meaningful way?”

• Is it “fundamental to economic practices?”• Is it “an idea itself” that is to say “a principle,

an original cause, a motive?”• Is it a mathematical formula?

Page 6: Patent Examination Examiner Guidelines on Alice

Part 2: Is the Claim Patent Eligible?

• Does the claim recite “significantly more” than the abstract idea itself?– Are there “other limitations in the claim that show

patent-eligible application of the abstract idea?”– Does it contain only a “mere instruction to apply

the abstract idea?• How much more is “significantly more”?

Page 7: Patent Examination Examiner Guidelines on Alice

Part 2: Examples of “more” that may be “significant” enough• Does the claim recite an “improvement” to

“another technology or technical field?”• Does it recite “improvements in the function of

the computer itself?”• Does it recite “meaningful limitations beyond

generally linking the use of an abstract idea to a particular technological environment.”

Page 8: Patent Examination Examiner Guidelines on Alice

Part 2: Examples of “more” that may not be “significant” enough• Does the claim simply add “apply it” or

equivalent language to the abstract idea?• Does the claim simply recite “implementing”

the idea on a computer?• Does the claim require no more than a generic

computer to perform “generic computer functions that are well-understood, routine, and conventional activities previously known to the industry?”

Page 9: Patent Examination Examiner Guidelines on Alice

After the two-step analysis. . .

• Continue regardless of outcome of abstract idea analysis

• Determine utility and double patenting under 101, and non-statutory double patenting

• Determine patentability under 102, 103, and 112

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Other Guidance

• “Consider the claim as a whole by considering all claim elements, both individually and in combination.”

• “The basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(I).”

• Business method/software applications not patent ineligible per se

Page 11: Patent Examination Examiner Guidelines on Alice

Recent Developments

• The USPTO is withdrawing some notices of allowance

• Some withdrawn after issue fee was paid (!)– “We withdrew notice of allowances for some of

these applications due to the presence of at least one claim having an abstract idea and no more than a generic computer to perform generic computer functions.”

– “Applicants who had already paid the issue fee for applications withdrawn from allowance may request a refund . . .”

Page 12: Patent Examination Examiner Guidelines on Alice

Practice Tips

• In the near future: Recommend clients pay issue fee early for software applications!

• SCOTUS language suggests movement toward European “technical feature” to solve a “technical problem” standard: – Does the claim recite an “improvement” to

“another technology or technical field?”– Does it recite “improvements in the function of

the computer itself?”

Page 13: Patent Examination Examiner Guidelines on Alice

Practice Tips Cont.

• No clear guidance on what an “abstract idea” is. SCOTUS does not define it.

• Muddies “abstract idea” with 102/103: How is a “conventional activity previously known to the industry” determined without considering prior art?

• Expect more (not necessarily better) rejections on 101 issues

• Remains to be seen how much “more” recitation CAFC, DC, or Examiners will require