The Supreme Court’s June 19th opinion on Alice
v. CLS Bank may be arguably one of the most anticipated patent cases in recent
years. Many have anticipated this case
to be a stake for the Supreme Court to put a final say on the software
patentability once for all. Well, it did not happen. Categorically, software is still patent
eligible subject matter. The impact of
the decision will only be felt patent by patent.
Skipping the case history from the district court
through the Federal Circuit and ending up in the Supreme Court, the fundamental
dispute between the parties in this case is whether Alice’s computerized
platform for managing the settlement risk is a patent eligible subject matter
under 35 USC 101. The patent claims are
styled as a method for exchanging financial obligations, a computer system
configured to carry out the method, and a computer-readable storage medium containing
program code for causing a computer to perform the method. The Court determined
that Alice’s claims to methods were ineligible because “the claims at issue amount
to ‘nothing significantly more’ than an instruction to apply the abstract idea
of intermediated settlement using some unspecified, generic computer.” The claims to computer systems and
computer-readable storage media were held ineligible for similar reasons, i.e.,
that the generically recited computers in the claims add nothing of substance to
the underlying abstract idea.
On June 25, 2014, in view of Alice v. CLS Bank,
USPTO issued a preliminary examination instruction to the examination Corp. to
help guiding the examination of software patent applications. According to the instruction, an Examiner
must carry out a two-part analysis for abstract ideas. Part 1 involves the determination on whether
the claim is directed to an abstract idea including, for example, fundamental
economic practices, certain methods of organizing human activities, an idea of
itself and mathematical relationships/formulas.
If the Examiner decides that the claim is directed to an abstract idea, the
Examiner must then carry out the Part 2 analysis.
In Part 2 analyses, the Examiner must determine
whether any element or combination of elements, in the claim is sufficient to
ensure that the clam amounts to significantly more than the abstract idea
itself. The Examiner must consider the
claim as a whole by considering all claim elements, both individually and in combination. The examples of elements qualifying as “significantly
more” when recited in a claim with an abstract idea may include, for example,
improvement to another technology or technical field, improvement to the functioning
of the computer itself and meaningful limitations beyond generally linking the
use of an abstract idea to a particular technological environment.
The instruction further states that limitations that
are no enough to qualify as “significantly more” include, for example, adding
the words “apply it” 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 were well-understood, routine and
conventional activities previously known to the industry.
Under Part 2, if there are no meaningful limitations
in the claim that transform the abstract idea into a patent eligible
application, the claim should be rejected under 35 USC 101 as being directed to
non-statutory subject matter. If after
Part 2 analysis, the Examiner determines that the claim is patent eligible, the
Examiner should then proceed to determine the patentability of the claim under
35 USC 101 (utility and double patenting), non-statutory double patenting, 35
USC 112 (indefiniteness, written description and enablement), 35 USC 102 (anticipation)
and 35 USC 103 (obviousness).
Happy July 4th!
Connie
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