U.S. Patent and Trademark Office Issues Preliminary Examination Instructions in View of Supreme Court's Decision in Alice Corp. v. CLS Bank

June 30, 2014

By: Mary K. Murray, Ph.D.

Hamilton Brook Smith Reynolds Alert

On June 25, 2014, the U.S. Patent and Trademark Office (USPTO) issued preliminary instructions to assist examiners in determining whether a claimed invention is patent eligible under 35 U.S.C. §101 in view of the June 19, 2014, United States Supreme Court decision in Alice Corp. Pty. Ltd. v. CLS Bank International, et al. The decision holds that claims directed to a scheme for mitigating "settlement risk" are directed to a patent-ineligible abstract idea. The preliminary instructions differ from the current guidelines in two respects. First, the preliminary instructions require the same analysis of patent eligibility regardless of whether the claim is directed to an "abstract idea" or a "law of nature." Second, the analysis is identical irrespective of the category of the claimed invention (e.g., process, composition of matter).

The preliminary instructions follow the Supreme Court's decision in Alice Corp. that a determination of patent eligible subject matter of an "abstract idea" is based on the Supreme Court's earlier decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. 566 U.S. __ (2012). The standard set forth by the Court in Mayo has been used by the USPTO in assessing patent eligibility for "laws of nature." The preliminary instructions make it clear that "Alice Corp. neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods."

The preliminary instructions, like the Supreme Court, do not define an "abstract idea," but reference examples of "abstract ideas" from the Court's decision in Alice Corp.:

  • Fundamental economic practices;
  • Certain methods of organizing human activities;
  • "An idea" of itself; and
  • Mathematical relationships/formulas.


The preliminary instructions further provide that if an examiner determines that the claimed subject matter is directed to an "abstract idea," the examiner must then determine if the claimed invention adds "significantly more" to the "abstract idea." Again, like the Supreme Court in Alice Corp., the USPTO does not define a threshold for "significantly more," but references the following examples cited by the Supreme Court in Alice Corp.:

  • Improvements to another technology or technical field;
  • Improvements to functioning of the computer itself; and
  • Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.


Further, the USPTO cites the following examples from Alice Corp. that will not qualify as "significantly more" than the "abstract idea":

  • Adding the words "apply it" (or equivalent) with an abstract idea, or mere instructions to implement an abstract idea on a computer;
  • Requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry.


These preliminary instructions are an interim measure, as "[t]he USPTO is continuing to study Alice Corp. in the context of existing precedent and will seek public feedback on the instructions." No timeframe is provided for seeking public comment.

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June 30, 2014

By: Mary K. Murray, Ph.D.

Hamilton Brook Smith Reynolds Alert

On June 25, 2014, the U.S. Patent and Trademark Office (USPTO) issued preliminary instructions to assist examiners in determining whether a claimed invention is patent eligible under 35 U.S.C. §101 in view of the June 19, 2014, United States Supreme Court decision in Alice Corp. Pty. Ltd. v. CLS Bank International, et al. The decision holds that claims directed to a scheme for mitigating "settlement risk" are directed to a patent-ineligible abstract idea. The preliminary instructions differ from the current guidelines in two respects. First, the preliminary instructions require the same analysis of patent eligibility regardless of whether the claim is directed to an "abstract idea" or a "law of nature." Second, the analysis is identical irrespective of the category of the claimed invention (e.g., process, composition of matter).

The preliminary instructions follow the Supreme Court's decision in Alice Corp. that a determination of patent eligible subject matter of an "abstract idea" is based on the Supreme Court's earlier decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. 566 U.S. __ (2012). The standard set forth by the Court in Mayo has been used by the USPTO in assessing patent eligibility for "laws of nature." The preliminary instructions make it clear that "Alice Corp. neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods."

The preliminary instructions, like the Supreme Court, do not define an "abstract idea," but reference examples of "abstract ideas" from the Court's decision in Alice Corp.:

  • Fundamental economic practices;
  • Certain methods of organizing human activities;
  • "An idea" of itself; and
  • Mathematical relationships/formulas.


The preliminary instructions further provide that if an examiner determines that the claimed subject matter is directed to an "abstract idea," the examiner must then determine if the claimed invention adds "significantly more" to the "abstract idea." Again, like the Supreme Court in Alice Corp., the USPTO does not define a threshold for "significantly more," but references the following examples cited by the Supreme Court in Alice Corp.:

  • Improvements to another technology or technical field;
  • Improvements to functioning of the computer itself; and
  • Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.


Further, the USPTO cites the following examples from Alice Corp. that will not qualify as "significantly more" than the "abstract idea":

  • Adding the words "apply it" (or equivalent) with an abstract idea, or mere instructions to implement an abstract idea on a computer;
  • Requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry.


These preliminary instructions are an interim measure, as "[t]he USPTO is continuing to study Alice Corp. in the context of existing precedent and will seek public feedback on the instructions." No timeframe is provided for seeking public comment.

PDF FileView as PDF

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