Despite what the United States Patent and Trademark Office suggested in their initial guidance to patent examiners, the Supreme Court’s decision in Alice v. CLS Bank has substantially changed the prosecution landscape for computer implemented inventions (i.e., software).
At least initially, the USPTO guidance to examiners seemed extremely patentee friendly. In a memo to the patent examining corps, the USPTO explained that the reason Alice’s claims were determined to be patent ineligible was because “the generically-recited computers in the claims add nothing of substance to the underlying abstract idea.” The USPTO then went on to point out to patent examiners that there is no new category of innovation that is patent ineligible, nor is there any new or special requirements for the eligibility of either software or business methods. Deputy Commissioner for Patent Examination Policy Andrew Hirshfeld explained: “Notably, 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.”
Hirshfeld also explained that there is now a slight change in the way applications are to be examined when claims involve abstract ideas. Essentially, it was said, Alice stands for the proposition that the same analysis should be used for all types of judicial exceptions and the same analysis should be used for all categories of invention. Still, even recognizing this shift in analysis, Hirshfeld told examiners: “[T]he basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(I).” (emphasis added). Therefore, this initial guidance clearly took the position that nothing has changed from a substantive law point of view as far as the USPTO was concerned.
But then reports started surfacing from multiple patent attorneys who frequent the computer implemented method arena. Not only was the USPTO rejecting patent applications with a new Alice rejection, but in cases where no 101 patent eligibility rejection had previously been made, supplemental office actions were being sent out rejecting all claims based on Alice. There is even a form paragraph, which reads:
Claims… are rejected under 35 U.S.C. 101 because the claimed invention is directed to non statutory subject matter. In the instant invention, the claims are directed towards the concept of… [This] is considered a method of organizing human activities, therefore the claims are drawn to an abstract idea. The claims do not recite limitations that are “significantly more” than the abstract idea because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. It should be noted the limitations of the current claims are performed by the generically recited processor. The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. Therefore, claims… are directed to non-statutory subject matter.
Clearly there is a disconnect between the initial guidance and what is transpiring at the USPTO. But wait, it gets worse.
After issuing the initial guidance the USPTO must have received blow back from somewhere, maybe the Obama Administration, which has made numerous statements about the patent system that are anything but patentee friendly. Whatever the cause, the USPTO is asking for comments on their initial interpretation of the meaning of Alice v. CLS Bank. This is highly unusual in the case of quick, initial guidance. They are doing it under the guise of allowing further comment on the Mayo/Myriad guidelines, but the recently published notice quite clearly explains:
The United States Patent and Trademark Office (USPTO) has issued preliminary instructions on Alice Corp. to the patent examining corps and these preliminary instructions have been posted on the USPTO’s Internet Web site. The USPTO is inviting public comment on the Alice Corp. preliminary instructions.
(emphasis added).
But wait, it gets worse even still.
Patent Examiners are now canceling Notices of Allowance and yanking previously granted claims back into prosecution while citing the Supreme Court’s ruling in Alice. In some instances, granted claims are being pulled back into prosecution only to be rejected as lacking patent-eligible subject matter even after the issue fee has been paid. I have also been told that an Examiner in one case has issued a new Examiner’s Answer in an appeal to include a new Alice 101 rejection.
Time will tell what this all means, but it seems that the USPTO is internally taking the position I anticipated in my initial reaction to the Alice decision. While applications filed moving forward can be drafted to meet this new standard, a great many issued patents and patent applications will wind up being completely worthless, I’m afraid.
Tags: Alice v. CLS Bank, patent, Patent eligibility, Patent Office, patentable subject matter, patents, SCOTUS, Supreme Court, USPTO
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