Alice in Patentland II – Can a Look Across the Pond Help?

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On May 10, 2013, the Federal Circuit (CAFC) issued their en-banc opinion(s) on CLS Bank Int’l v. Alice Corp.  Alice, an Australian corporation, had appealed the decision of the District Court invalidating the claims for not being directed to statutory (patentable) subject matter.  The claims at issue relate to conducting financial transactions using a third party supervisory institutions to settle obligations, in order to reduce the risk.  A divided court upheld the decision of the District Court.

The en-banc opinion does not provide a precedent that can guide us as how to determine whether a claim including an abstract idea recites statutory subject (or how to determine what qualifies as an “abstract idea’- I guess we will know one when we see one).  Although I do not embrace the “technical effect” approach of the EPO and “invention concept” is as nebulous as “technical effect,” a look at the EPO Boards of Appeal decisions could have been useful.

In decision T258/97 (citing T 27/97), the Boards of Appeal stated that the abstract concept could be included in the lack of obviousness consideration only if a contribution to a solution of a problem was linked to the abstract concept.  Assessment of lack of obviousness has to be based on the other elements of the claim if a contribution by the abstract concept to a solution of the problem could not be established.

Once the method claims aredeemed not to be patentable subject matter, the system claims can be attacked by obviousness (35U.S.C. §103).  In the Alice patents, the system claims have usual components – storage units, communications units – and a processor configured to perform the method.  If the method is not available for the §103 analysis, anyone skilled in the art (or not so skilled) could assemble the system from known parts.  That renders the system obvious and non-patentable. The above approach avoids having to extend the patentable subject matter (35 USC §101) analysis to systems and articles of manufacture, which are statutory subject matter.

Maybe a look at the EPO approach could have been useful.