In Patent Law

The past 18 months or so, many patent prosecutors – myself included – have been struggling with a Supreme Court decision from 2014 (Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014)), which is often referred to simply as “Alice.” This decision has significantly changed the landscape of what is patentable, especially for those of us who work in software-related fields.

To provide a brief background, section 101 of the U.S. Patent Code states that:

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

An important implicit exception to this is that Laws of Nature, Natural Phenomena and Abstract Ideas are not patentable. The Alice decision specifically addresses the notion of “Abstract Ideas.”

According to Alice, “abstract ideas” include: “fundamental economic practices,” “methods of organizing human activity,” and “an idea of itself.” Thus, if an invention is directed to an abstract idea, in order for it to be patentable, there must be an “inventive concept” present, which amounts to “significantly more” than the abstract idea in itself. Clear as mud, right?

As you probably have guessed by now, the main problem with this formulation is that nobody really knows what this concept of “significantly more” means. Since the decision is not very old, there is not enough case law that would provide sufficient guidance as to what the “significantly more” actually entails.

One thing that is clear, however, is that in the software world, the “mere recitation of a generic computer cannot transform a patent-ineligible abstract ide into a patent-eligible invention.” In other words, if your invention relates to something that (at least in theory could be done by pen and paper, pretty much regardless of how slow/complicated it would be to do so) and you say “do it on one or more computers” (because it’s faster, more efficient, and what not), this is generally not sufficient to amount to “significantly more.”

It is also clear that your chances of having an invention that is patentable may increase if you, for example, describe your invention in terms of a specialized machine, or if you can argue that your invention solves a problem that is “necessarily rooted in computer technology.” Many clever patent practitioners have attempted to describe inventions and craft claims in ways that they comply with Alice, while at the same time protecting the essence of the invention, but at this point, it is largely a game of “hit-or-miss.” I once heard a practitioner say “After Alice, unless you can drop your invention on your foot, it’s not likely to be patentable.” While this might be a slight exaggeration, there’s unfortunately a lot of truth to it, and at this point all we can do as practitioners is to wait and see how things play out in various courts, and take our best stab in the meantime at drafting the best possible claims. I will keep an eye on any developments and return with new blog posts on this topic as more information becomes available – maybe even this week as I am at a conference at the USPTO where the topic will be discussed.

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