Yesterday, the USPTO issued the most recent guidelines of patent subject matter eligibility pursuant to 35 U.S.C. 101, i.e. the detemrination of when an invention will be found ineligible for an "abstract idea", "law of nature", or "natural phenomenon".  This update follows the two preceding updates each from July 2015, and late 2014 (after the Alice decision).  Specifically, the new memorandum issued by the Deputy Commissioner now requires that an examiner: (1) identify the judicial exception by referring what is recited in the claim and explain why it is considered an exception; (2) identify any additional elements (specifically point to claim features/limitations/steps) recited in the claim beyond the identified judicial exception; and (3) explain the reason(s) that the additional elements taken individually, and as a combination, do not result in the claim as a whole amounting to significantly more than the judicial exception.  Overall, this appears to be an increased burden on the examiner in formulating an initial 101 rejection.  Additional examples and recent court decisions have also been provided.  For more, visit http://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0.

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The Supreme Court in AliceMayo, Myriad, and Bilski -- four cases in just four years -- dramatically redefined the issue of subject matter eligibility in patent law.  That is, the initial threshold question of whether an invention is eligible for obtaining patent protection in the first place.  The broad strokes of these cases left much to be desired, particularly and most recently in Alice, in which the Supreme Court created a vague 2-step analysis in determining when a (software or business method) invention is merely an "abstract idea", and therefore not patent eligible.  Understandably, the US PTO has encountered difficulty in applying the Alice analysis following the case, but has strived to offer some additional clarity in its latest July 2015 update to its prior 2014 Interim Guidance on Patent Subject Matter Eligibility.

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The USPTO today issued an updated and comprehensive guideline regarding patent subject matter eligibility in view of the recent Supreme Court decisions in Alice CorpMyriad, and Mayo.  This "2014 Interim Guidance on Patent Subject Matter Eligibility" was published today, December 16, 2014.  

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In the aftermath of the Supreme Court decision in Alice Corp v. CLS Bank, we have been keeping a close eye on Federal Circuit and PTAB decisions for further clarification on the case's more stringent test regarding patent-eligibility under 35 USC 101. In this article we note several post-Alice developments regarding the patent eligibility of software processes that may fall in the category of "abstract ideas".

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The Supreme Court has granted a writ of certiorari in the software patent case of Alice Corp. v. CLS Bank International, et al. (Docket No 13-298), where a divided en banc Federal Circuit could not agree on a standard for assessing patent eligibility for computer-implemented inventions under  35 USC § 101.  This case will provide a new test for the most basic provision of U.S. patent laws -- whether an invention is patent eligibile -- a threshold test that must first be met before the further requirements of novelty (§ 102) and non-obviousness (§ 103) are considered.

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Four months after the CLS Bank v. Alice opinion, the Federal Circuit continues to struggle with subject matter eligibility of computer-related inventions under § 101 of the U.S. patent laws.  In Accenture Global Services, GMBH v. Guidewire Software, Inc. (Fed Cir. 2013), Chief Judge Rader and Judge Lourie continue their disparate dialog that began in CLS Bank Int'l v. Alice Corp, and continued in Ultramercial Inc. v. Hulu LLC. However, contrary to the result in Ultramercial, here the party arguing against eligibility of computer programs won out.

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As written earlier in our blog, the CLS Bank decision left many guessing as to what might be considered patent eligible subject matter under § 101 of the U.S. patent laws.  In a more recent and less known opinion, Ultramercial, Inc. v. Hulu, LLC (Fed. Cir. 2013), a three judge panel attempted to provide some additional guidance in light of the CLS Bank indecision.  Of note is that the panel included the authors of the two main opposing opinions in CLS Bank, Chief Judge Rader and Judge Lourie.  However, rather than authoring different holdings, the panel agreed that the claims at issue in this case met the requirements of § 101.

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When are computer related inventions considered patent eligible rather than merely abstract ideas? Put simply, there is no bright line test at the moment, which was essentially (though unofficially) confirmed in CLS Bank International v. Alice Corp on May 10, 2013. Rather than providing a specific new test for determining whether a computer-implemented invention is patent eligible and not merely an “abstract” idea under Section 101 of the U.S. patent laws, the Federal Circuit in this case simply issued a per curiam opinion affirming the District Court’s ruling. The District court held that the asserted claims of Alice Corp.’s U.S. patents were invalid because they did not recite patent-eligible subject matter, but were instead merely directed to the abstract idea of “employing an intermediary to facilitate simultaneous exchange of obligations in order to minimize risk,” despite involving computers.

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