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PatentAdvisor Reveals Immediate Fallout from Alice Ruling

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178389705_150x228In a previous Reed Tech IP Solutions blog post, we discussed the U.S. Supreme Court’s June 2014 ruling in Alice v. CLS Bank, which found “abstract ideas” to be unpatentable subject matter under 35 U.S.C. Section 101. As we noted at the time, the Alice decision may impact many pending patent applications and previously allowed patents, particularly those with claims focused on business methods or on software implementations of previously existing processes.

A review of recent office actions issued by the U.S. Patent and Trademark Office in the wake of the Alice decision shows that examiners already are citing the case with a more skeptical eye upon applicants’ patent claims.

Just days after the Supreme Court decision was announced, the USPTO issued preliminary instructions to its patent examiners on how to evaluate patent claims in view of the ruling. The new guidance refers examiners to the legal framework established by the Supreme Court’s decision in Mayo v. Prometheus (2012). In that ruling, the court held that an applicant’s methods of administering and monitoring the effects of certain medications were not patentable because they merely told doctors “to engage in well-understood, routine, conventional activity previously engaged in by scientists” with respect to a “law of nature,” i.e., the drugs’ effects on patients.

Andrew Hirshfeld, the USPTO’s Deputy Commissioner for Patent Examination Policy, told the bureau’s patent examiners to immediately regard “abstract ideas” as a judicial exception to patentable subject matter, on par with “laws of nature,” “natural products,” and “natural phenomena,” the only judicial exceptions to patentability previously acknowledged by the USPTO.

In the weeks since the release of the new guidelines, about 200 office actions issued by USPTO patent examiners already have referred at least in part to the Alice decision. The office actions in question, identified by Reed Tech using the Document Search function of the LexisNexis PatentAdvisor information system, were mostly non-final rejections but included a number of final rejections.

Two of the more notable of these office actions specifically cited Alice as the main impetus for the rejection. Less than two weeks after the decision, a Hewlett-Packard application for “a system and method to indicate code block execution” received a final rejection rooted in Alice-based, Section 101 grounds.

The patent examiner language echoed that of Justice Clarence Thomas’s Alice opinion when he wrote that Hewlett Packard’s claims “require that [an] abstract idea is implemented on a computer or performed with a computer. However, the claims require no more than a generic computer to perform generic computer functions that are well-understood [and] routine … This rejection is based on preliminary examination instructions promulgated following the decision in Alice Corp. v. CLS Bank.”

About two weeks later, another household name, American Express, received its fourth final rejection on a 10-year-old application for a patent on a “pay yourself first loyalty system and method.”

In telling the company that the majority of its claims failed to meet Section 101 eligibility requirements, the patent examiner wrote that the application’s claims were “substantively directed to financial management … a fundamental economic practice. As such, similar to Alice Corp., Applicant’s method falls short of evidencing a patent-eligible application of the abstract idea.”

An office action search of numerous other early office actions suggest that the post-Alice guidelines are looming large in the minds of the patent examiner corps. Many of the office actions found in the PatentAdvisor Document Search referring to the Alice ruling call applicants’ attention to the new preliminary instructions whenever their claims are perceived to flirt with the “abstract idea” criterion, even if the examiner issued the rejection on other grounds.

As its examiners continue to implement the new examination instructions, the USPTO’s wider interpretation of the Alice Supreme Court decision remains a work in progress and may present a burgeoning set of patent application risks. While noting that Alice vs CLS did not preclude the allowance of either software or business method patents, the USPTO appeared eager for additional input on how to interpret the Supreme Court’s decision.

“The USPTO is especially interested in receiving comments regarding the scope and extent of the holding in Alice Corp.,” the agency wrote on a page soliciting public feedback on the preliminary examination instructions.

A public comment period on the instructions is scheduled to run through July 31, 2014.

 

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