USPTO Issues “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.”

The USPTO has issued preliminary guidelines in view of last week’s Supreme Court decision in Alice v. CLS Bank effective June 25, 2014.

According to the guidelines, the current instructions differ from previous guidance from the USPTO on two points:

1) The same analysis should be used for all types of judicial exceptions.

2) The same analysis should be used for all categories of claims.

In order to determine if a claim falls under a judicial exception, having established first that it falls under one of the four categories of invention, the USPTO instructs to follow a two-part analysis:

Part 1: First, determine whether the claim is directed to an abstract idea.  Although no definition of abstract idea is provided, examples of abstract ideas are stated to include: fundamental economic practices, certain methods of organizing human activities, an idea of itself and mathematical relationships/formulas.

Part 2:  If it is determined that an abstract idea is comprised in the claim, determine “whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself”.  While the borders of “significantly more” are not established, some examples are provided: improvements to another technology or technological 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 that do not add “significantly more” are: adding the word “apply it” (or an equivalent) to the abstract idea, or 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 the claim does not amount to significantly more than the judicial exception, the claim should be rejected under 35 USC § 101.

The USPTO has invited the public to submit written comments for assistance in formulating further guidance on this topic until July 31, 2014.

The guidelines can be found in the following link:

// Isabel Cantallops Fiol