Abstract Ideas – Are they Patentable?

Recently, the USPTO issued a memorandum to its Examiner Corps, entitled “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.” At its core, the memo addressed subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas. Comments were submitted by AIPLA and IPO (two leading IP bar associations).

The memo and the comments recognized the Alice decision did change substantive patent eligibility law or fundamental examination guidance.  However, the comments emphasized that Alice did not create a per se excluded category of business methods or software, or impose any special requirements for eligibility of business methods or software.

The premise of the guidance is that abstract ideas are fundamental building blocks of human ingenuity and are not patentable—inventors must use those building blocks to construct their innovations.

Examiners are tasked with evaluating whether (1) the claim is “directed to” an abstract idea or whether it includes an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible claim; (2) to assess whether ‘additional features’ are present and the claim is not a drafting effort designed to monopolize the abstract idea; and finally, (3) there should be some application[s] of the claimed concepts ‘to a new and useful end’.

By Greg Marcum

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