Legislation Update

• Jurisdiction: United States,Federal
• Citation: Vol. 39 No. 4
• Publication year: 2014
• Author: Ben Borson
• topic: Patent law

Legislation Update

Ben Borson

Borson Law Group

Mark Leonard

Davis & Leonard, LLP

USPTO INITIATIVES

Section 101 Guidance in view of Alice v. CLS Bank

On June 25, 2014, the USPTO released its initial "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty v. CLS Bank International, et al. Below is the Author's summary of the key points of the new Guidance.

Holding of the Court

Claims are ineligible because they do not represent significantly more than "an instruction to apply the abstract idea of Intermediated Settlement using some unspecified, generic computer."

Holding is Limited to Abstract Ideas

Guidance relating to Natural laws and Natural phenomena have already been addressed in 4 March 2014 guidance (based on Mayo v. Prometheus and AMP v. USPTO and Myriad). However, the USPTO uses the same framework for determining patent eligibility as in the Mayo/Myriad guidance. Nonetheless, the USPTO acknowledged that the guidance document "does not represent substantive law."

1. Fundamental economic practice
2. Methods for organizing human activities
3. An idea of itself
4. Mathematical formulae or relationships.

The following is the USPTO's process flow for analyzing claims drawn to Abstract ideas.

1. Is the claim directed toward process, machine, manufacture or composition?
1. If not, the not eligible
2. If yes, then ask:
2. Does the claim include an Abstract Idea?
1. If no, then eligible.
2. If yes, then ask:
3. Does the claim as a whole recite "significantly more" than the abstract idea?

Consider elements separately, and in an ordered combination.

1. Favoring eligibility:
1. Improvements in another technology
2. Improvements in functioning of a computer
3. Meaningful limits beyond generally linking use of the abstract idea to a particular technological environment.
4. d. Inclusion of an "Inventive concept."
5. "Applications to a new and useful end" (from Diamond v. Diehr).
2. Disfavoring eligibility
1. Adding the words "Apply it" or equivalent using a computer.
2. Requiring no more than a generic computer to perform functions that are well-known, routine, or conventional.
3. from Alice: the claims "lack express language to define the computer's participation."
4. from Alice: "configured to," "data processing system," "communications controller," "data storage unit" are purely functional.

Comment

There has been much discussion of the "Alice" guidance. In the view of the Author of this Comment, all three Supreme Court opinions raise questions of fact. These include:

1. The meaning of the term "Abstract Idea;"
2. The...