PTO Guidance After Alice

Last week, the USPTO provided the patent examining corps with Preliminary Examination Instructions in light of the Supreme Court’s opinion in Alice Corp.  The memo indicates that the Supreme Court has extended the framework set forth in Prometheus to all claims directed to laws of nature, natural phenomena, and abstract ideas.  Previously, the PTO had only applied Prometheus to laws of nature.

The instructions advocate a two part analysis with respect to abstract ideas.  First, determine whether the claim is directed to an abstract idea.  The instructions do not provide any guidance on how to determine whether the claim is directed to an abstract idea.  This is not surprising because the Supreme Court’s opinions have not provided such guidance either.  I guess you’re supposed to know it when you see it.

If the claim is directed to an abstract idea, the analysis should proceed to step two.

If an abstract idea is present 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. In other words, are there other limitations in the claim that show a patent-eligible application of the abstract idea, e.g., more than a mere instruction to apply the abstract idea? Consider the claim as a whole by considering all claim elements, both individually and in combination.

The instructions then refer to certain types of limitations that may qualify the claims as including “significantly more” than the mere abstract idea.  The examples include improvements to another technology or technological field, improvements to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.

The instructions also refer to the example of the claims in Alice Corp. as claims that did not include the required “significantly more” limitations to an abstract idea, such as the programming of a general computer to perform the abstract idea.

The Supreme Court’s “you’ll know it when you see it” type of analysis makes it very difficult for inventors, patent applicants, and patent attorneys to have any type of certainty as to whether an invention or the claims to an invention will pass the Supreme Court’s muster.

The attack on patents continues . . .

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