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

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: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.”

USPTO Response Most recent USPTO memo to Examiners: Includes preliminary instructions for analyzing claimsmemo 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)

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

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?

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”?

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.”

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?”

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

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

Recent Developments The USPTO is withdrawing some notices of allowancewithdrawing 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...”

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?”

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