Many U.S. Examiners (e.g. Examiners in Art Unit 3600) feel obligated to now reject computer-implemented methods and systems as failing to meet the 35 U.S.C. § 101 (patent eligibility subject matter requirement) in view of the U.S. Supreme Court decision in Alice Corp. v. CLS Bank Int’l. For example, U.S. Patent Office Art Unit 3600 has assembled a panel of examiners to review pending computer-implemented method and system patent applications to determine whether their patent claims raise patent ineligibility issues under § 101 in view of Alice Corp. Citing the "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Ply. Ltd. v. CLS Bank" (hereinafter "Preliminary Instructions") issued June 25, 2014, many Examiners are now asserting that claims which previously would have met the subject matter patent eligibility requirements under § 101, now fail Alice Corp's two-step test for patent eligibility. The Examiners' rational is that computer-implemented method claims are directed to an "abstract idea" (e.g. "organizing human activities") and the computer-implemented "abstract idea" does not improving another technology or improving the function of the computer itself. The two step test articulated in Alice Corp is:
Step 1: Is the patent claim directed to one of the three patent ineligible concepts of Laws of Nature, Natural Phenomena or an Abstract Idea, (“LNA”)? If no, then the patent claim does not raise a § 101 issue. If yes, then step 2.
Step 2: If the claim is directed to a LNA, does the claim put meaningful limitations on the LNA and/or apply the LNA in a way that limits the LNA, e.g. does the patent claim recites a meaningful application of the LNA so that the claim is not merely the LNA performed in a computer environment, and thereby claims less than the LNA, itself?
Under Step 1, the Preliminary Instructions, provides a non-exhaustive list of "abstract ideas" including fundamental economic practices, certain methods of organizing human activities, an idea of itself, and mathematical relationships/formulas.
Under Step 2, the "Preliminary Instructions" provides a non-exhaustive, non-exclusive, non-limiting list of examples of how a computer-implemented "abstract idea" can be patent eligible including improving another technology, improving the function of the computer itself, and putting a meaningful limitation on the abstract idea to a particular technical environment.
Based on multiple personal examples, some Examiners feel that they must reject patent claims based on the "Preliminary Instructions" forcing them to find that the subject "method" (implemented via a computer) is an organizing human activity, thus satisfying Step 1, and then move on to Step 2. Under Step 2, the Examiners then assert that the "Preliminary Instructions" require the "abstract claims" to be computer-implemented to improve another technology or the function of the computer itself in order to find the claim patent eligible under § 101.
The apparent trend of the Examiners to reject computer-implemented claims as failing to meet the requirements of § 101 in view of Alice Corp. v. CLS Bank Int’l is not surprising. Post-Bilski (machine or transformation criteria is one test for patent eligibility) but Pre-Alice Corp, many Examiners required some recitation of a physical computer or processor in many software and business method claims in order to find the method claims were patent eligible under §101. Essentially, Examiners would assume that a software method claim would fail Step 1, i.e. the method was abstract, a law of nature or natural phenomena. But, if the Examiners determined that the software method claim was sufficiently computer-implemented, the Examiners would allow the claim under § 101. In this way, Examiners never had to deal with determining whether the underlining software method was an "abstract idea".
Under Bilski and the US Patent Office prior examination guidelines, computer implementation of a method and a computer system performing the method, in most cases, were considered patent eligible under § 101. Alice Corp. has changed this calculus. Under Alice Corp, mere computer implementation of a method (e.g. software) deemed "abstract"/"an abstract idea" is not sufficient to satisfy §101. Unfortunately, Alice Corps', 'I know an abstract idea when I see it' analysis of a patent claim and failure to define an "abstract idea" does not provide the Examining corps much advice on a proper test to use to determine when a method is directed to an abstract idea.
For more background information of the Alice Corp. v. CLS Bank Int’l, please see our other articles/posts:
- EYEWITNESS PROGNOSTICATIONS CONFIRMED: U.S. Supreme Court Finds Computer-Implemented Business Method & System Claims in Alice Corp. v. CLS Bank Ineligible for Patent Protection
- “Supreme Court Finds Computer Implemented Method and System Claims patent-ineligible as directed to the abstract idea of a "Fundamental Economic Practice."
- “Eyewitness Insights on Arguments Heard by the U.S. Supreme Court on the Patentability of Computer Implemented Methods.”
- OP-IP blog post, “Déjà vu all over again…
© Stephen J. Weyer 2014
Send email feedback- sweyer@stites.com
No comments:
Post a Comment