Alice’s Adventures: how has USPTO examination changed in the first few weeks after Alice v. CLS Bank?

In the first few weeks after the Supreme Court published its opinion in Alice Corporation Pty Ltd. v. CLS Bank Int’l, the USPTO appears to be struggling with exactly how the Court’s decision should affect USPTO examination procedures. However, that struggle may soon be resolved as additional guidance from the USPTO and the courts shed more light on how Alice will be implemented.

A week after the Court issued its decision, the USPTO published a set of Preliminary Examination Instructions in view of the Supreme Court Decision in Alice.  The Preliminary Examination Instructions explained that Alice made clear that (1) the USPTO should consistently use the same subject matter eligibility analysis for evaluating abstract ideas as it uses for laws of nature, and (2) the USPTO should treat method claims and apparatus claims the same for the purpose of eligibility.

With those two exceptions, the Preliminary Examination Instructions state that “the basic inquiries to determine subject matter eligibility remain the same.” In particular, Examiners should ask (1) does the claim involve an abstract idea, and (2) if so, does the claim include enough additional elements to ensure that the claim amounts to significantly more than the abstract idea itself?

However, in the weeks since the decision, USPTO Office Actions in pending applications have been anything but consistent. In some cases, the USPTO has withdrawn previous Office Actions and replaced them with new ones that add Section 101 rejections in view of Alice. In those cases, the USPTO is rejecting method claims that involve use of a computer to perform a calculation and yield a result. In many others, the USPTO has left similarly structured claims intact.

A recent article by Professor Donald Chisum proposed that “there are strong grounds for the proposition that a patent claim reaches a safe harbor from Section 101 abstract idea scrutiny . . .  if the claimant establishes that the claim is directed to a solution of a technological problem.”

Professor Chisum’s proposal appears to be consistent with the teachings of Alice. However, in practice the USPTO seems to requiring a bit more. In off-the-record statements, a few Examiners stated that when they review claims involving manipulation of data, they are requiring more than just the method solve a problem. Instead, the Examiners say that even if the result solves a technological problem, the claim must include steps that actually apply the result to the problem. This approach seems similar to the old “machine-or-transformation” test of In re Bilski, which the Supreme Court has consistently held is useful, but not a requirement for patent-eligibility.

Patent applicants also may be informed by a recent Federal Circuit decision. In   its first post-Alice decision involving subject-matter eligibility (Digitech Image Technologies. v. Electronics for Imaging, Inc.), the Federal Circuit affirmed the invalidation of patent claims covering a device profile and a method of generating the device profile. In the case, the court recalled the Supreme Court’s Parker v. Flook decision, in which the Supreme Court stated: “If a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.” In the Digitech case, the device profile claims simply covered a data structure, and the method claims covered a method of generating the data structure. Although the patent holder argued that the device profile was integral to an image processing system and transformation of a digital image, the Federal Circuit noted that “[the patent] does not claim the processor’s use of that profile in the capturing, transforming or rendering of a digital image.”

Based on the USPTO’s guidance and actions, as well as Alice and the subsequent caselaw, patent applicants who claim methods of calculating may benefit by supplementing the claims with a step that applies the result to solve a technological problem.

Members of the public now have an opportunity to ask the USPTO for additional guidance in view of Alice, but they will need to act fast:  The USPTO invites public comment on its Preliminary Examination Instructions through July 21, 2014. It is likely that the USPTO will revise its Instructions or publish other guidance after the USPTO considers the public comment.


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