Eligibility for patent protection (Patentable subject matter)


Recently, the Federal Circuit published an opinion (CLS Bank v. Alice) which appears to conflict with an opinion (Mayo v. Prometheus) by the United States Supreme Court published a few months ago.

Inventive concept in Mayo

In Mayo v. Prometheus, the U.S. Supreme Court recently held that eligibility for patent protection is determined by analyzing the “inventive concept” being claimed.  In its analysis, the court whittled out the prior art from the claims until the “inventive concept” remained.

“As a whole” analysis in CLS Bank

In CLS Bank v. Alice, the Federal Circuit held that the “inventive concept” of an idea is based on the claims as a whole.  No whittling allowed.  The dissenting opinion in CLS Bank indicated that by taking the claim as a whole for the patent eligibility analysis, the Federal Circuit did not follow the opinion of Mayo.

“As a whole” analysis less likely to lead to invalidated patents

By analyzing the claims as a whole, the Federal Circuit made it more difficult to invalidate a patent for being ineligible for patent protection.  The Federal Circuit further lowered the bar so that more inventions are eligible for patent protection by stating in CLS Bank that:

“this court holds that when—after taking all of the claim recitations into consideration—it is not manifestly evident that a claim is directed to a patent ineligible abstract idea, that claim must not be deemed for that reason to be inadequate under § 101.”  (emphasis added).

Unless the single most reasonable understanding is that a claim is directed to nothing more than a fundamental truth or disembodied concept, with no limitations in the claim attaching that idea to a specific application, it is inappropriate to hold that the claim is directed to a patent ineligible “abstract idea” under 35 U.S.C. § 101.

By forcing the district court to analyze the claim as a whole and requiring the claim to be manifestly evident that it is directed to an ineligible abstract idea, the Federal Circuit appears to be sending a signal that it prefers not to invalidate a patent based on its subject matter.


Although the CLS Bank and Mayo appear to be in conflict with each other as mentioned by the dissenting opinion, the Federal Circuit seems to be making a distinction in that CLS Bank determines whether a claimed invention is directed to abstract idea, whereas, the Supreme Court’s decision in Mayo decides whether a claimed invention directed to an abstract idea is still, nonetheless, eligible for patent protection.

Effects of CLS Bank

CLS Bank appears to be enlarging the scope of eligible subject matter for patent protection.  At least, this is the way it seems from the language of the case.  However, we must wait to see how the district courts interpret CLS Bank and Mayo and how subsequent panel members of the Federal Circuit apply the law stated in CLS Bank and Mayo.

Patent drafting strategies

In drafting patent applications, it is important to realize the differences in CLS Bank and Mayo. Moreover, the United States Patent and Trademark Office (USPTO) also adds a level of complexity since they will promulgate examination guidelines on how to implement the rules based on these and subsequent cases.  These USPTO rules do not have the effect of a rule of law but as practitioners, these are the rules that we must adhere to unless you plan to go through a costly appeal through the court system.

The USPTO has also promulgated interim guidelines in response to Prometheus and Bilski, the other seminal cases dealing with the issue of patent eligible subject matter. See, 2012 Interim Procedure for Subject Matter Eligibility Analysis of Process Claims Involving Law of Nature and Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos.  One should also read these interim guidelines.

For patent practitioners, the issue raised by CLS Bank and Mayo affect patent prosecution strategies.  In my opinion, it is best to take a layered approach.  The patent application should attempt to satisfy the rules promulgated by the Patent Office and Mayo.  As for the Federal Circuit’s opinion in CLS Bank, the majority is casting a broad net so as to make as many inventions eligible for patent protection, and thus, minimize issues related to eligibility of patent protection.

(See comment below for my reasoning as to why the S.Ct. in Mayo was deciding when an abstract idea or law of nature can be eligible for patent protection, whereas, the Fed. Cir. in CLS Bank was deciding whether a claim is directed to an abstract idea.  September 12, 2012, James Yang)

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Irvine Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

About the Author

James Yang is a patent attorney whose practice encompasses all areas of intellectual property law including patents, trademarks, copyrights and trade secrets.

1 Enlightened Reply

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  1. James Yang says:

    Dear Rick,

    Thanks for the comment. Here was my reasoning and the pinpoint references to the mayo and cls bank cases. In prometheus, the supreme court stated that the claims at issue were directed to a law of nature. They assumed that the claims was directed to a law of nature. on page 8 of prometheus, the s. ct. states”the question before us is whether the claims do significantly more than simply describe these natural relations. To put the matter more precisely, do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural law? We believe that the answer to this question is no.”

    The federal circuit when they decide CLS Bank, in my opinion, didn’t like the structure of the Section 101 analysis laid out in Mayo v. Prometheus. As such, it appears that bypassed Prometheus altogether. On Page 13 of CLS Bank, the Federal Circuit states “While the Supreme Court’s recent decision in Prometheus reiterated the trilogy of ‘implicit’ exceptions to patent eligibility, it did not directly address how to determine whether a claim is drawn to an abstract idea in the first instance.” (emphasis added). On page 14, the Fed. Cir. recognizes the problems of defining what is abstract. They go through the Bilski definition on page 14. They go through the Alappat and Research corp definition as well on the same page. They discuss how the courts tried to define it through preemption on pages 14-17. Last sentence of pg 16 states that the essential concern is not preemption “but the extent to which preemption results in the foreclosure of innovation.”

    On pages 20 and 21 of CLS Bank, the Fed. Cir. states its holding regarding the “manifestly evident” and the “single most reasonable understanding”.

    I wanted to be thorough because I thought that others might have the same question.

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