IP monitor - Computer Implemented Inventions: Through the Looking Glass

Publication September 2015

USPTO guidance provides clarity into Post-Alice practice

Over the last few months, the United States Patent and Trademark Office has issued a set of guidance documents that help clarify the state of patent office practice as it relates to patent subject matter eligibility following the Alice decision by the United States Supreme Court (Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 2347 (2014)). These guidance documents provide useful hypothetical and real examples derived from recent judicial decisions before the Federal Circuit and the United States Supreme Court.

The most recent guidance document is a table of Subject Matter Eligibility Court Decisions, which provides patent applicants with a quick reference chart that concisely lists cases in chronological order, indicating the patents / applications in issue as well as the judicial conclusion as it related to the particular claims in question of each case.

For prospective patent applicants, a quick review of these decisions and the guidance may be instrumental in helping draft patent applications and/or claims that have a stronger chance of patentability. Specific examples are provided in relation to digital image processing, games, financial technology, life sciences, manufacturing, sensors in the context of optimizing device performance, among others. Further, the USPTO has given helpful reasoning alongside the claim examples, indicating why the claims were found patent-eligible or patent-ineligible (e.g., when looking at the limitations as an ordered combination, the invention as a whole amounts to significantly more than simply organizing and comparing data).

The guidance can be found online: http://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0. A copy of the Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 2347 (2014) is also provided: http://www.uspto.gov/patents/announce/alice_v_cls_sct.pdf

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