On June 25, 2014, the USPTO issued a memorandum to the Examination Corps, entitled “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.” This memorandum provides preliminary instructions, effective June 25, 2014, to the Patent Examining Corps relating to subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas. (A copy of the Preliminary Examination Instructions can be found here.) The memorandum states that the instructions are preliminary in nature, and that further guidance will be issued. In addition, the USPTO is requesting comments regarding their guidance to the examining corps.
In summary, the memorandum provides instructions to the Patent Examining Corps relating to subject matter eligibility of claims involving “abstract ideas,” particularly computer-implemented abstract ideas, under 35 U.S.C. § 101. The eligibility framework for claims involving abstract ideas is the same as the current framework for claims directed to laws of nature and natural phenomena.
According to the memorandum:
1) Alice Corp. establishes that the same analysis should be used for all types of judicial exceptions, whereas prior USPTO guidance applied a different analysis to claims involving abstract ideas than to claims involving laws of nature.
2) Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims), whereas prior guidance applied a different analysis to product claims involving abstract ideas than to process claims.
Assuming the claim falls within one of the statutory categories (i.e., process, machine, manufacture, or composition of matter), the examiner should determine whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) using Part I of the two-part analysis summarized below, and, if so, determine whether the claim is a patent-eligible application of an exception using Part 2.
Two-part Analysis for Abstract Ideas
The Examining Corps are instructed to analyze all claims (product and process) using the following two-part analysis:
Part 1: Determine whether the claim is directed to an abstract idea.
Per the decision in Alice Corp., abstract ideas are excluded from eligibility based on a concern that monopolization of the basic tools of scientific and technological work might impede innovation more than it would promote it. At the same time, the courts have tread carefully in construing this exclusion because, at some level, all inventions embody, use, reflect, rest upon, or apply abstract ideas and the other exceptions. Thus, an invention is not rendered ineligible simply because it involves an abstract concept. In fact, inventions that integrate the building blocks of human ingenuity into something more by applying the abstract idea in a meaningful way are eligible.
Examples of abstract ideas referenced in Alice Corp. include:
Fundamental economic practices;
Certain methods of organizing human activities;
An idea of itself; and
Claims that include abstract ideas like these should be examined under Part 2 to determine whether the abstract idea has been applied in an eligible manner. If an abstract idea is present in the claim, proceed to Part 2 below. If not, proceed with examination of the claim for compliance with the other statutory requirements for patentability.
Part 2: If an abstract idea is present in the claim, determine whether any element in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. In other words, are there other limitations in the claim that show a patent-eligible application of the abstract idea, e.g., more than a mere instruction to apply the abstract idea?
Limitations referenced in Alice Corp. that may be enough to qualify as “significantly more” when recited in a claim with an abstract idea include:
Improvements to another technology or technical field;
Improvements to the functioning of the computer itself; and
Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.
Limitations referenced in Alice Corp. that are not enough to qualify as “significantly more” when recited in a claim with an abstract idea include:
Adding the words “apply it” (or an equivalent) 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 are well-understood, routine, and conventional activities previously known to the industry.
If there are no meaningful limitations in the claim that transform the exception into a patent eligible application such that the claim amounts to significantly more than the exception itself, the claim should be rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
After conducting the two-part analysis, proceed with examination of the claim, regardless of whether a rejection under § 101 has been made, to determine patentability in accordance with the other requirements of 35 U.S.C. § 101 (utility and double patenting), non-statutory double patenting, and §§112, 102, and 103.