Down the rabbit hole we go!
As we discussed in a prior post, the patent eligibility of inventions was supposed to be clarified last summer by the Supreme Court decision Alice Corp. Pty. Ltd. v. CLS BANK INTERNATIONAL et al.[i]
In fact, little was decided. Nonetheless the PTO quickly responded on June 25, 2014, by providing to the PTO examiners a memorandum with guidelines for examining patents in light of the holding in Alice.
According to the memorandum,(located at http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf), the examiner is to perform a new “two part” analysis. Following the logic of the Supremes, we are told again that the purpose of the “two part” analysis is that “abstract ideas” –yes, still undefined! -are excluded from patentability. The memorandum lists examples from Alice, including “fundamental economic practices, certain methods of organizing human activities, an idea of itself, and mathematical relationships.”
The memorandum indicates that if the claim recites an “abstract idea”, a second analysis is performed to determine whether the claim recites additional limitations that make the claim elements “significantly more” than a mere instruction to “apply the abstract idea”.
Examples that do provide “significantly more’’ are improvements to a technology or technical field, improvements to the computer itself, and “meaningful limitations” that go “beyond generally linking the use of the abstract idea to a particular technological environment”.
Examples of limitations that fail to pass the “abstract idea” prohibition are claims that add words like “apply it” to an abstract idea, or or “requiring no more than a generic computer to perform generic computer functions that are well understood, routine or previously known to the industry”. If the claim limitations fail to “transform” the exception, the claim is rejected as non-statutory subject matter under 35 USC §101.
If you were paying attention, you saw that the test rejects claims for reciting something that is “well known”. That is NOT the purpose of 35 USC 101! And so the Supremes are singing the right notes, but playing the wrong song. And the PTO, having to follow the decision, is trying to harmonize.
The result is not pretty. We will see in the next post how the courts have used the Alice holding to evaluate patents in cases heard since the decision.
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