United States:
U.S. Patent Examining Corps Sending Computer-Implemented Method And System Patent Applications To Apocryphal § 101 Death Panel
04 July 2014
Stites & Harbison PLLC
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Many U.S. Examiners (e.g. Examiners in Art Unit 3600) feel
obligated to now reject computer-implemented methods and systems as
failing to meet the 35 U.S.C. § 101 (patent eligibility
subject matter requirement) in view of the U.S. Supreme Court
decision in Alice Corp. v. CLS
Bank Int'l. For
example, U.S. Patent Office Art Unit 3600 has assembled a panel of
examiners to review pending computer-implemented method and system
patent applications to determine whether their patent claims raise
patent ineligibility issues under § 101 in view
of Alice Corp.
Citing
the "Preliminary Examination Instructions in view
of the Supreme Court Decision in Alice Corporation Ply.
Ltd. v. CLS Bank" (hereinafter
"Preliminary Instructions") issued June
25, 2014, many Examiners are now asserting that claims which
previously would have met the subject matter patent eligibility
requirements under § 101, now fail Alice Corp's two-step test for patent
eligibility. The Examiners' rational is that
computer-implemented method claims are directed to an
"abstract idea" (e.g. "organizing human
activities") and the computer-implemented "abstract
idea" does not improving another technology or improving the
function of the computer itself.
Step 1: Is the patent claim directed to one
of the three patent ineligible concepts
of Laws of
Nature, Natural Phenomena or
an Abstract Idea, ("LNA")? If
no, then the patent claim does not raise a § 101 issue.
If yes, then step 2.
Step 2: If the claim is directed to a LNA,
does the claim put meaningful limitations on the LNA and/or apply
the LNA in a way that limits the LNA, e.g. does the patent claim
recites a meaningful application of the LNA so that the claim is
not merely the LNA performed in a computer environment, and
thereby claims less than the LNA, itself?
Under Step 1, the
Preliminary Instructions, provides a
non-exhaustive list of "abstract ideas" including
fundamental economic practices, certain methods of organizing human
activities, an idea of itself, and mathematical
relationships/formulas.
Under Step 2, the "
Preliminary Instructions" provides a
non-exhaustive, non-exclusive,
non-limiting list of examples of how a
computer-implemented "abstract idea" can be patent
eligible including improving another technology, improving the
function of the computer itself, and putting a meaningful
limitation on the abstract idea to a particular technical
environment.
Based on multiple personal examples,
some Examiners feel that they must reject patent claims based on
the "
Preliminary Instructions" forcing
them to find that the subject "method" (implemented
via a computer) is an organizing human activity, thus satisfying
Step 1, and then move on to Step 2. Under Step 2, the
Examiners then assert that the "
Preliminary Instructions" require
the "abstract claims" to be computer-implemented to
improve another technology or the function of the computer itself
in order to find the claim patent eligible under § 101.
The apparent trend of the Examiners
to reject computer-implemented claims as failing to meet the
requirements of § 101 in view of
Alice Corp. v. CLS Bank
Int'l is
not surprising. Post-Bilski (machine or transformation criteria is
one test for patent eligibility) but Pre-Alice Corp, many Examiners required some
recitation of a physical computer or processor in many software and
business method claims in order to find the method claims were
patent eligible under §101. Essentially, Examiners
would assume that a software method claim would fail Step 1, i.e.
the method was abstract, a law of nature or natural phenomena.
But, if the Examiners determined that the software method
claim was sufficiently computer-implemented, the Examiners would
allow the claim under § 101. In this way, Examiners
never had to deal with determining whether the underlining software
method was an "abstract idea".
Under Bilski and the US Patent Office prior
examination guidelines, computer implementation of a method and a
computer system performing the method, in most cases, were
considered patent eligible under § 101. Alice Corp. has changed this calculus.
Under Alice Corp, mere computer implementation of a
method (e.g. software) deemed "abstract"/"an
abstract idea" is not sufficient
to satisfy §101. Unfortunately,
Alice Corps', 'I know an abstract
idea when I see it' analysis of a patent claim and
failure to define an "abstract idea" does not provide the
Examining corps much advice on a proper test to use to
determine when a method is directed to an abstract idea.
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