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Examiner Guidelines After Alice Corp.

Overview of the CLS Bank Int. v. Alice Corp. case and the USPTO response post-Alice decision. Learn the post-Alice examination analysis, examples of "more" that may be significant enough, recent developments, and practice tips. Understand the two-step analysis for patent eligibility.

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Examiner Guidelines After Alice Corp.

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  1. Examiner Guidelines After Alice Corp. How Much “More” is “Significantly More”? August 21, 2014

  2. Overview of CLS Bank Int. v. Alice Corp. • Alice Corp. claims system and method for reducing risk that a party to a deal won’t pay. • SCOTUS opinion: • This is a “computer-implemented scheme for mitigating ‘settlement risk’ . . . by using a third-party intermediary.” • claims are drawn to “the abstract idea of intermediated settlement” • “merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”

  3. USPTO Response • Most recent USPTO memo to Examiners: Includes preliminary instructions for analyzing claims • USPTO says Alice changes the process in two ways: • Must now use the same analysis for all types of judicial exceptions (not Bilski for abstract ideas and Mayo for laws of nature) • Now use same analysis for all categories of claims involving abstract ideas (not “tangibility test” for products and Bilski for processes)

  4. Post Alice Examination Analysis • Determine whether claim is directed to statutory category: process, machine, manufacture, composition of matter • Engage two-step Abstract Idea Test from SCOTUS opinion: • Determine if claim falls into a judicial exception: Law of nature, natural phenomenon, abstract idea • Determine whether claim is patent eligible

  5. Part 1: Is the claim directed to an Abstract Idea? • Does it monopolize “the basic tools of science and technological work?” • Does it “impede innovation more than it would promote it?” • Does it “integrate the building blocks of human ingenuity into something more by applying the abstract idea in a meaningful way?” • Is it “fundamental to economic practices?” • Is it “an idea itself” that is to say “a principle, an original cause, a motive?” • Is it a mathematical formula?

  6. Part 2: Is the Claim Patent Eligible? • Does the claim recite “significantly more” than the abstract idea itself? • Are there “other limitations in the claim that show patent-eligible application of the abstract idea?” • Does it contain only a “mere instruction to apply the abstract idea? • How much more is “significantly more”?

  7. Part 2: Examples of “more” that may be “significant” enough • Does the claim recite an “improvement” to “another technology or technical field?” • Does it recite “improvements in the function of the computer itself?” • Does it recite “meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.”

  8. Part 2: Examples of “more” that may not be “significant” enough • Does the claim simply add “apply it” or equivalent language to the abstract idea? • Does the claim simply recite “implementing” the idea on a computer? • Does the claim require no more than a generic computer to perform “generic computer functions that are well-understood, routine, and conventional activities previously known to the industry?”

  9. After the two-step analysis. . . • Continue regardless of outcome of abstract idea analysis • Determine utility and double patenting under 101, and non-statutory double patenting • Determine patentability under 102, 103, and 112

  10. Other Guidance • “Consider the claim as a whole by considering all claim elements, both individually and in combination.” • “The basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(I).” • Business method/software applications not patent ineligible per se

  11. Recent Developments • The USPTO is withdrawing some notices of allowance • Some withdrawn after issue fee was paid (!) • “We withdrew notice of allowances for some of these applications due to the presence of at least one claim having an abstract idea and no more than a generic computer to perform generic computer functions.” • “Applicants who had already paid the issue fee for applications withdrawn from allowance may request a refund . . .”

  12. Practice Tips • In the near future: Recommend clients pay issue fee early for software applications! • SCOTUS language suggests movement toward European “technical feature” to solve a “technical problem” standard: • Does the claim recite an “improvement” to “another technology or technical field?” • Does it recite “improvements in the function of the computer itself?”

  13. Practice Tips Cont. • No clear guidance on what an “abstract idea” is. SCOTUS does not define it. • Muddies “abstract idea” with 102/103: How is a “conventional activity previously known to the industry” determined without considering prior art? • Expect more (not necessarily better) rejections on 101 issues • Remains to be seen how much “more” recitation CAFC, DC, or Examiners will require

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