USPTO Implements Test for Patent Eligible Subject Matter Under §101 Following the Supreme Court’s Alice Decision

We recently discussed the Supreme Court’s test for patentable subject matter under section 101 in Alice Corp. Pty v. CLS Bank Int’l, 573 U.S. ___ (2014). In its opinion, the Court applied the two-step process set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. __ (2102); (i) whether the claims are directed to patent-ineligible matter (e.g., abstract idea) and (ii) whether the claims contain an inventive concept (e.g., “additional features to ensure that the claim is more than a drafting effort designed to monopolize the abstract idea.”).

Following the Alice Corp. decision, the United States Patent and Trademark Office on June 25, 2014, issued a memorandum identifying the preliminary instructions for analyzing claims with abstract ideas. The basic inquiries to determine subject matter eligibility are:

  1. Is the claim is directed to one of the four statutory categories of invention, i.e., process machine, manufacture, or composition of matter?;
  2. (a). If no, reject the claim as being directed to non-statutory subject matter;
    (b). If yes, is the claim directed to a judicial exception, i.e., law of nature, natural phenomenon, or abstract idea?;
  3. If yes, does the claim contain any element, or combination of elements, sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.

Steps 2(b) and 3 above comprise the test outlined in Mayo and reaffirmed in Alice Corp. In regard to the last step, the memorandum identifies (i) improvements to another technology or technical field, (ii) improvements to the functioning of the computer itself, and (iii) meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment as examples of what may constitute “significantly more” in the analysis of claims directed to abstract ideas.

It should be noted that prior USPTO guidelines applied a different test to claims with abstract ideas than that applied to other judicial exceptions. Additionally, product claims and process claims were analyzed differently. Now, after Alice Corp., the test from Mayo applies to claims directed to each of the judicial exceptions and the same analysis should be used for all categories of claims, e.g. product and process claims.

Note that these guidelines are preliminary and Gibbons will continue to track how the USPTO applies the new guidance in analyzing claims for patent eligible subject matter.

Robert E. Rudnick is a Director in the Gibbons Intellectual Property Department. Charles H. Chevalier, an Associate in the Gibbons Intellectual Property Department, co-authored this post.
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