Since the June 2014 U.S. Supreme Court decision in Alice Corporation Pty Ltd. v. CLS Bank Int’l, patent applicants, courts and the U.S. Patent and Trademark Office have struggled to establish clear and consistent standards for the patent-eligibility of software and business method inventions, with particular murkiness around the definition of what is and is not an “abstract idea” or “significantly more” than an abstract idea.
While many of the early cases explained why the specific claims failed to satisfy patent-eligibility requirements, as later cases further defined the boundaries for patent eligibility the USPTO collected those cases into a series of guidance documents. The USPTO makes those guidance documents available to the public on a Subject Matter Eligibility page of the USPTO website. The USPTO’s most recent Subject Matter Eligibility Guidance is dated 2019, with a revision in June 2020. The latest document states that any USPTO subject matter eligibility guidance dated prior to January 2018 “should not be relied upon,” although claims “considered eligible under prior guidance should [still] be considered patent eligible under this guidance.”
To overcome rejections, and to draft cases with an eye toward eligibility, Applicants are best served to craft claims and arguments that are analogous to those allowed by established precedent, and especially Federal Circuit decisions, as well as the examples described in the USPTO’s Subject Matter Eligibility Guidance.
To help with this process, patent applicants can find some insight from the growing number of court and PTAB decisions that declined to overturn patent claims. A summary of those cases, with links to the cases and patents, follows:
[Note: The Federal Circuit decisions on this post are up-to-date, but this blog is no longer updating the lists of District Court or PTAB decisions]