On June 25, 2014, just six days after the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the USPTO issued its Preliminary Examination Instructions (“Guidance”) in view of the case. Subsequently, the Office asked for public comments on the Guidance. Over forty companies, associations, law firms and individuals submitted comments, including myself. This series of posts is based on the comments I submitted to the Office.
In my view, the Guidance does not correctly interpret the Supreme Court’s decision, and does not provide specific guidance to the 7,000 examiners who will have to implement them on a daily basis. The Court’s decision was not written as a manual for how examiners are to evaluate patent applications, and so simply quoting and paraphrasing the decision (along with scrupulous footnoting) is not sufficient to provide a cohesive, workable framework for the examination of patent applications, particularly for computer implemented inventions. The core problem remains that examiners will be left to their own subjective evaluation and opinion of the patent eligibility of the claims before them. Already, the patent community is observing very different approaches from different examiners. This lack of uniformity leads to increased costs and delays in the examination of patents, as well as increased uncertainty by innovators as to the eligibility of their inventions in technologies that have been traditionally considered patent eligible.
In this series of posts I provide a framework for interpreting the Court’s decision in a way that is consistent with the overall approach to § 101 that the Court has adopted.
Alice and the Mayo Two Step Test of Patent Eligibility
The core holding of Alice is to establish a uniform two step test for patent eligibility that applies to all of the judicial exceptions to § 101:
First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts.
If so, we then ask, "[w]hat else is there in the claims before us?" To answer that question, we consider the elements of each claim both individually and "as an ordered combination" to determine whether the additional elements "transform the nature of the claim" into a patent-eligible application.
We have described step two of this analysis as a search for an " 'inventive concept' "--i.e., an element or combination of elements that is "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself. Alice, 132 S.Ct. at 2355 (internal citations to Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289,omitted).
The Guidance accurately captures this framework:
- First determine whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does not fall within one of the categories, reject the claim as being directed to non-statutory subject matter.
- Second, if the claim does fall within one of the statutory categories, determine whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) using Part 1 of the two-part analysis detailed below.
- Third, determine whether the claim is a patent-eligible application of an exception using Part 2.
First and foremost, the two steps of Mayo, what the Guidance calls Part 1 and Part 2, are real tests. This means there are three possible outcomes under Mayo for claims directed to one of the four statutory categories:
- Claim does not recite a patent ineligible concept. Outcome: no rejection under § 101.
- Claim recites a patent ineligible concept. Proceed to Mayo step two.
- Claim recites an “inventive concept”. Outcome: no rejection under § 101.
- Claim does not recite an “inventive concept.” Outcome: Rejection under § 101.
The Federal Circuit's decision in Buysafe v. Google, confirms this interpretation:
In simultaneously rejecting a general business method exception to patent eligibility and finding the hedging claims invalid, moreover, Bilski makes clear that the recognition that the formation or manipulation of economic relations may involve an abstract idea does not amount to creation of a business-method exception. The required section 101 inquiry has a second step beyond identification of an abstract idea. If enough extra is included in a claim, it passes muster under section 101 even if it amounts to a...
