Under U.S. patent laws, Section 101 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.” Judicially, the courts have limited the breadth of Section 101 by stating laws of nature, natural phenomena and abstract ideas are ineligible for patent protection. In its recent decision, the United States Supreme Court provided limited guidance as to when a claimed invention falls within the judicially created exceptions. Unfortunately, the opinion of Alice Corp v. CLS Bank could be interpreted so broadly that all inventions are ineligible for patent protection under Section 101.
The Supreme Court explained that the primary driver for the judicial exceptions is pre-emption, and wanted to distinguish between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into “something more.”
The majority in Alice recognized that “all inventions … embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” This may suggest that any and all inventions may be ineligible for patent protection. However, in my view, the majority does not mean that all inventions fall within one of the judicial exceptions, and here is why – the opinion reaffirmed the framework set forth in Mayo v. Prometheus, where eligibility for patent protection is evaluated based on a two-step process. The first step is to determine whether the claimed invention falls within one of the exceptions. By making this the first step in the analysis, the Court appears to indicate that although all inventions incorporate a law of nature, natural phenomena or abstract idea to a certain degree, not all inventions will be considered to fit within the exception.
In Alice, the Court refused to delineate the boundaries of whether a claimed invention should be considered to be an abstract idea, but compared the claimed invention to prior cases (risk hedging from Bilski, determining metabolite levels from Mayo, catalytic conversion alarm limits from Flook, in contrast to the rubber curing process of Diehr) and concluded that the claimed invention was directed to an abstract idea. Accordingly, it appears that the Supreme Court wants the lower courts to wrestle with the specific metes and bounds of the judicial exceptions over a longer period of time and over a greater number of cases.
The second step involves a search for an “inventive concept” which is an identification of an element or combination of elements that is sufficient to ensure that the patent in practice amounts to something “significantly more than a patent upon the ineligible concept itself.” The Court and prior opinions have made clear that merely adding a computer limitation or a technological environment will not transform the claim from ineligible to eligible patent protection.
After the Alice decision, the USPTO has provided preliminary guidance to its examining corps. The guidance provided by the USPTO does not appear to change the standard as applied at the USPTO level. Moreover, the USPTO is instructing the examiners to analyze the claim with respect to novelty and non-obviousness even if the examiner is of the opinion that the claimed invention is ineligible for patent protection. The guidance provided by the USPTO in light of Alice v. CLS facilitates prosecution of patent applications so that that the patent application is not held up merely because the examiner and applicant might disagree on the eligibility of patent protection.
I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.