The Supreme Court in Alice, Mayo, 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.
This July 2015 update attempts to incorporate in subsequent Federal Circuit rulings after the Alice decision from June of last year. However, recent jurisprudence have not offered much additional insight as to what exactly defines an “abstract idea”. As various district judges have noted, an abstract idea pursuant to Alice is one that is roughly determined by a “I know it when I see it” review. See Eclipse IP v. McKinley Equipment (C.D. Cal. 2014).
In view of this critical gap, the US PTO has instructed its examiners to abide strictly to court decisions finding for patent ineligibility under 35 USC 101, and to only find an abstract idea in patent prosecution, when the concept of the invention parallels one that has been found to be abstract in a court decision.
A list of court decisions, as well as the latest eligibility guidance, is maintained by the US PTO at http://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0.