written by David Postolski, Esq., Patent Attorney at Gearhart Law
On June 25 the United States Patent Office issued instructions for examiners to follow when examining claims to determine if the subject matter is eligible for patent protection in response to the Supreme Court decision of June 19, 2014 of Alice Corp. PTY ltd v CLS Bank International. Patent subject matter includes processes, machines, manufactures and compositions of matter as outlined in 37 CFR Section 101. Ineligible patentable subject matter includes abstract ideas, laws of nature or natural phenomenon.
Reported as the decision to be the death of software patents, such conjecture is an exaggeration to say the least. The main question in Alice was whether claims to a computer implemented invention are abstract ideas and thus not patentable. Interestingly enough, the decision that was supposed to be the death of software patents never went into an analysis of what software is, nor what a business method is. The Alice decision instead, ruled that Alice's claims were deemed to be patent ineligible abstract ideas because the claims "generically recite computers in the claims and add nothing of substance to the underlying abstract idea” and a patent should ultimately not preempt “fundamental concepts i.e. ideas that are the building blocks of human ingenuity and modern commerce”.
These instructions are supplements to the recently issued Mayo v Prometheus examiner guidelines except the Alice instructions focus squarely on a 2 part Analysis.
The 2 part analysis requires examiners (and the federal courts) to 1st determine whether the claim recites or is directed to a patent ineligible concept such as an abstract idea. For example, in Alice, the abstract ideas were:
· fundamental economic practices,
· certain methods of organizing human activities,
· an idea of itself,
· mathematical relationships and formulas.
If the abstract idea is present in the claim the 2nd step follows. The 2nd Step involves the analysis of whether the elements of the claims or the combination of elements of the claim are sufficient to ensure that the claim amounts to “significantly more” than the abstract idea itself. For example, as outlined in the Alice decision, “significantly more” could include:
· improvements to another technology or technical fields,
· improvements to the functioning of the computer itself,
· meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment.
Example of limitations that do not satisfy the “significantly more” standard include:
· adding the words "apply it" with an abstract idea,
· adding mere instructions to implement the abstract idea,
· requiring no more than a generic computer to perform generic computer functions that are well understood, routine and conventional activities known in the industry.
The Alice instructions have already been applied by the Federal Courts. Case in point -Digitech Image vs. Electronic for Imaging (Fed. Circuit 2014). The Digitech invention involved the tagging of digital images with information about the camera and the cameras color/spatial image qualities. The claims were directed to the device’s data set profiles as well as a method for generating a device’s data set profile. The data set profiles were simply information about the cameras qualities.
The court applied the 2 step analysis and determined that the patent in question involved the following abstract idea: "creation of two data sets by taking existing information such as measured chromatic stimuli and spatial stimuli and organizing this information into a new form. “ The court held that the claim involved an "ineligible abstract process of gathering and combining data that did not require input from a physical device." The court then looked to see if the patent claim provided that "something more" that would transform the result into something patentable and there wasn't. The court further held that the claim simply recites a "process that employs mathematical algorithms to manipulate existing information to generate additional information" and that in of itself is not patentable.
We write this column today as the fallout from the Alice instructions is also being felt outside of the Courts as well. The Patent Office has been canceling Notice of Allowances and pulling granted claims while citing the Alice vs. CLS bank decision. However, on August 4, 2014, USPTO Commissioner for Patents Peggy Focarino , stated that “this limited action was closely-tailored and taken specifically in reaction to the Alice Corp. decision. We do not anticipate further review of any applications indicated as allowable under this process, as examiners are currently following the Alice Corp. preliminary instructions during examination (i.e., prior to allowance).” We have yet to experience this first hand but rest assured, we believe that through the public comment period (which ended on July 31, 2014) and due to the difficulty involved in defining what is an abstract idea, any fall out will be met by all of us with swift resolution and detailed analysis.