USPTO Issues Preliminary Examination Instructions to Patent Examining Corps After CLS Bank | Practical Law

USPTO Issues Preliminary Examination Instructions to Patent Examining Corps After CLS Bank | Practical Law

Reflecting the US Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, the US Patent and Trademark Office (USPTO) issued preliminary examination instructions to the Patent Examining Corps concerning the patent eligibility of claims involving abstract ideas. Specifically, for these types of claims, patent examiners now must use the same framework used to determine patent eligibility of claims involving laws of nature and natural phenomena.

USPTO Issues Preliminary Examination Instructions to Patent Examining Corps After CLS Bank

by Practical Law Intellectual Property & Technology
Published on 26 Jun 2014 • USA (National/Federal)
Reflecting the US Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, the US Patent and Trademark Office (USPTO) issued preliminary examination instructions to the Patent Examining Corps concerning the patent eligibility of claims involving abstract ideas. Specifically, for these types of claims, patent examiners now must use the same framework used to determine patent eligibility of claims involving laws of nature and natural phenomena.
On June 25, 2014, the USPTO issued preliminary examination guidelines to the Patent Examining Corps addressing the subject matter eligibility of claims involving abstract ideas under 35 U.S.C. § 101. The new guidelines reflect the US Supreme Court decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l (No. 13-298, (S. Ct. June 19, 2014)). (For more information on the Supreme Court's CLS Bank decision, see Legal Update, Supreme Court: Computerized Methods for Mitigating Settlement Risk Are Unpatentable Abstract Ideas.)
Effective immediately, the USPTO will examine all claims involving abstract ideas using the framework set out in Mayo Collaborative Srvs. v. Prometheus Labs., Inc., which also governs the analysis of claims directed to laws of nature and natural phenomena. (132 S.Ct. 1289 (2012)). Specifically, the USPTO will now examine all claims involving an abstract idea by:
  • Determining whether the claim is directed to an abstract idea.
  • If a claim includes an abstract idea, determining whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Limitations which may render the claim patent eligible include limitations covering:
    • improvements to another technology or technical field;
    • improvements to the functioning of the computer itself; and
    • meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.
    Limitations which may not be enough to render the claim patent eligible are:
    • adding the words "apply it," or an equivalent, to an abstract idea or mere instructions to implement an abstract idea on a computer; and
    • 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.
The new guidelines differ from previous USPTO practice, which used a different framework for:
  • Claims involving abstract ideas.
  • Product claims involving abstract ideas and process claims.
The USPTO seeks public feedback on its instructions and will issue further guidance after additional consideration of CLS Bank and receipt of public feedback. Written comments must be received on or before July 31, 2014 (79 FR 36786-01 (June 30, 2014)).