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Preliminary Examination Guidelines for Determining Subject Matter Eligibility

Posted on Jul 1, 2014 in Blog

Last month, we blogged about the recent Supreme Court decision in Alice Corp. Pty Ltd. v. CLS Bank Int’l, U.S., No. 13-298, 6/19/14.

In view of that decision, on June 25, 2014 the PTO issued preliminary instructions for use when determining subject matter eligibility of claims involving abstract ideas(e.g., computer-implemented abstract ideas) under 35 U.S.C. 101.

PTO personnel are now directed to use the following two-part analysis for abstract ideas.

Part I: Determine whether the claim is directed to an abstract idea.

Examples of abstract ideas referenced in Alice Corp. include:

  • Fundamental economic practices;
  • Certain methods of organizing human activities;
  • An idea of itself; and,
  • Mathematical relationships/formulas.

Part 2: If an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. In other words, are there other limitations in the claim that show a patent-eligible application of the abstract idea, e.g., more than a mere instruction to apply the abstract idea?

Limitations referenced in Alice Corp. that may be enough to qualify as “significantly more” when recited in a claim with an abstract idea include, as non-limiting or non-exclusive examples:

  • Improvements to another technology or technical fields;
  • Improvements to the functioning of the computer itself; and
  • Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.

Limitations referenced in Alice Corp. that are not enough to qualify as “significantly more” when recited in a claim with an abstract idea include, as non-limiting or non-exclusive examples:

  • Adding the words “apply it” (or an equivalent) with an abstract idea, or mere
  • instructions to implement an abstract idea on a computer; and
  • Requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry.

If there are no meaningful limitations in the claim that transform the abstract idea exception into a patent eligible application such that the claim amounts to significantly more than the exception itself, then the examiners are directed to reject the claim under 35 U.S.C. ยง 101 as being directed to non-statutory subject matter.

Please contact us if you need assistance interpreting and applying these guidelines to patent your invention or to challenge the patents of your competitors.

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