The United States Supreme Court today unanimously reaffirmed
that the mere implementation of an abstract idea in a computer is
not sufficient to render it eligible for a patent.
The Court's decision in Alice Corp. v. CLS Bank
concerned patents directed to a scheme for mitigating settlement
risk in financial transactions. In contrast with the patent at
issue in the 2010 Bilski v. Kappos case, the Alice patents
included method, system and computer-readable medium claims, each
of which recited elements of a computer.
In reaching its decision, the Court drew in part on its 2012
decision in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., which had set out a framework for
determining whether claims are directed to patent-eligible subject
matter. Under that framework, a court must first determine whether
the patent claims are directed to a patent-ineligible concept, such
as an abstract idea or a law of nature. If so, then the claim's
elements must be considered both individually and "as an
ordered combination" to determine if they provide
"significantly more" that can "transform the nature
of the claim" into a patent-eligible application.
In this case, the Court found that the claims were clearly
directed to a patent-ineligible concept: the abstract idea of
mitigating settlement risk. The additional features found in the
method claims were found to be "purely conventional" and
to require only a generic computer to perform generic computer
functions. This was not sufficient to render the claimed subject
matter patent-eligible. In particular, the Court noted that
"stating an abstract idea while adding the words 'apply it
with a computer'" is not enough to confer patent
eligibility. The system claims and computer-readable medium claims
were held to be "no different from the method claims in
This decision is consistent with recent decisions, such as
Bilski v. Kappos and Mayo v. Prometheus, which
serve to rein in business method patents and some types of software
As in those previous cases, the Court stopped short of ruling
all computer-implemented inventions ineligible. The decision
explicitly notes that method claims that "improve the
functioning of the computer itself" or that "effect an
improvement in any other technology or technical field" will
still be patent-eligible. Such claims would presumably contain the
"significantly more" that is needed.
Unfortunately, the Supreme Court did not provide a clear formula
for identifying when there is "significantly more" than
an abstract idea. Prospective patentees will need to consider these
aspects of their inventions carefully, particularly with
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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