In the wake of Alice Corp. v. CLS Bank Int’l., the U.S. Patent and Trademark Office has issued "preliminary instructions effective today to the Patent Examining Corps relating to subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas, under 35 U.S.c. § 101." At the same time, the USPTO is clearly struggling with a challenge noted by many: "Alice Corp. neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods." The one clear conclusion from Alice Corp. is that the two-part analysis of Mayo Collaborative Services v. Prometheus Laboratories, Inc., is the analysis to be applied to Section 101 questions, regardless of whether the claims are drawn to a law of nature, abstract idea, process, and/or apparatus. So in light of single analysis that is now to be applied, and in light of the inherent vagueness that remains in that analysis, how should applicants and prosecutors pursuing software and business method claims before the USPTO proceed?
The two-part analysis for patent-eligibility mandated by the Supreme Court, and immediately adopted by the USPTO is, on its face, simple. First, "[d]etermine whether the claim is directed to an abstract idea." Second:
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? Consider the claim as a whole by considering all claim elements, both individually and in combination.
The USPTO's memorandum goes on to give examples of what might qualify as an "abstract idea" triggering the second part of the analysis. The memorandum also provides examples of various items that do and do not qualify as "significantly more."
Unfortunately, but almost certainly unavoidably, these examples, like the Section 101 test itself, are themselves abstract, albeit based on prior Supreme Court cases. For example, "[i]mprovements to another technology or technical field" and "[m]eaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment" add "significantly more." Further, claim elements are to be considered "both individually and in combination." All of which says that the USPTO and patent applicants are stuck with a highly subjective test.
Is it at all realistic to expect consistent or predictable application of this test? What is a patent applicant to do? Well, first of all, I believe that this is a case where the honest expert has to admit to not having a complete answer to these questions. Our best hope is that a few years of patent-eligibility litigation in the federal courts and the Patent Trial and Appeals Board will do what four years of litigation since Bilski v. Kappos has not done, and make patent-eligibility predictable in individual cases. In the meantime, patent applicants need to know how to proceed now in view of Alice Corp. and the USPTO's current interpretation of that case.
After giving this question a lot of thought, I wish I felt some special insight was possible. But even given the vagueness of the current situation, here are some guidelines for potential and current patent applicants in view of the USPTO's preliminary Alice Corp. guidelines.