Many U.S. Examiners (e.g. Examiners in Art Unit 3600) feel obligated to now reject computer-implemented methods and systems as failing to meet the 35 U.S.C. § 101 (patent eligibility subject matter requirement) in view of the U.S. Supreme Court decision in Alice Corp. v. CLS Bank Int'l. For example, U.S. Patent Office Art Unit 3600 has assembled a panel of examiners to review pending computer-implemented method and system patent applications to determine whether their patent claims raise patent ineligibility issues under § 101 in view of Alice Corp. Citing the "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Ply. Ltd. v. CLS Bank" (hereinafter "Preliminary Instructions") issued June 25, 2014, many Examiners are now asserting that claims which previously would have met the subject matter patent eligibility requirements under § 101, now fail Alice Corp's two-step test for patent eligibility. The Examiners' rational is that computer-implemented method claims are directed to an "abstract idea" (e.g. "organizing human activities") and the computer-implemented "abstract idea" does not improving another technology or improving the function of the computer itself.
The two step test articulated in Alice Corp is:
Under Bilski and the US Patent Office prior examination guidelines, computer implementation of a method and a computer system performing the method, in most cases, were considered patent eligible under § 101. Alice Corp. has changed this calculus. Under Alice Corp, mere computer implementation of a method (e.g. software) deemed "abstract"/"an abstract idea" is not sufficient to satisfy §101. Unfortunately, Alice Corps', 'I know an abstract idea when I see it' analysis of a patent claim and failure to define an "abstract idea" does not provide the Examining corps much advice on a proper test to use to determine when a method is directed to an abstract idea.
- EYEWITNESS PROGNOSTICATIONS CONFIRMED: U.S. Supreme Court Finds Computer-Implemented Business Method & System Claims in Alice Corp. v. CLS Bank Ineligible for Patent Protection
- "Supreme Court Finds Computer Implemented Method and System Claims patent-ineligible as directed to the abstract idea of a "Fundamental Economic Practice."
- "Eyewitness Insights on Arguments Heard by the U.S. Supreme Court on the Patentability of Computer Implemented Methods."
- OP-IP blog post, "Déjà vu all over again...
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