Last week I reported The Supreme Court unanimously decided that computer implemented business methods are not patent eligible subject matter.  See Alice Corp Ruling Spells Trouble but There May Be a “Diamond” in the Rough for Business Method, Software, and Biotech Patents.  Now, less than a week later the US Patent and Trademark Office (USPTO) has issued an instruction memorandum to its Patent Examining Corps for analyzing patent claims involving abstract ideas.  See USPTO Preliminary Examination Instructions.

The Alice Corp case centered on a group of patents covering a method for reducing the risk that the parties to a financial transaction will not pay their obligations.  The Supreme Court determined that “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 USPTO makes it clear that patent claims involving abstract ideas should now be analyzed using the two-part framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.  This analysis supersedes the USPTO’s previous instruction to use MPEP 2106(II)(A) and 2106(II)(B).

  • Part 1:  Determine whether the claim is directed to an abstract idea.  If so,
  • Part 2:  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.

Examples of elements that provide significantly more to the claim include:

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

The memo then instructs Examiners to reject claims that fail to include such limitations.

It is important to note that USPTO was careful in stating that “Alice Corp. neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods.”  Furthermore, the USPTO indicated it will issue further guidance after additional consideration of the decision and public feedback.  Clearly, the USPTO is now more sensitive to keeping the public apprised and involved in the guidance process – something they failed to do earlier this year with the issuance of their Guidance directed towards biotech inventions.

The good news is the USPTO is seeking to quickly address the concerns that Alice Corp. and the other recent Supreme Court cases have created for patent practitioners and the technologies they serve.  Also, the new instruction memorandum does provide some meaningful guidance for drafting patent eligible claims.

– Anthony D. Sabatelli, PhD, JD
Check out Anthony’s bio page


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