Post-Alice Prosecution Guideline
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The document outlines the implications of the Supreme Court's decision in Alice Corp v. CLS Bank, which invalidated certain patent claims related to intermediated settlement, ruling them as abstract ideas lacking patent eligibility. It provides a two-part analysis for evaluating claims involving abstract ideas and offers practical tips for drafting patent claims that may overcome rejection, emphasizing the inclusion of technical elements and detailed steps. Additionally, it highlights the need for solid hardware support in patent specifications to avoid unnecessary disputes about eligibility.
Post-Alice Prosecution Guideline
- 1. Post-Alice Prosecution Guideline Nelson Mullins High Technology Team
- 2. Nelson Mullins Riley & Scarborough LLP Alice Corp v. CLS Bank Invalidated Alice Corp's patent claims about the intermediated settlement The SC holds that the claims of the patent: are drawn to the abstract idea of intermediated settlement; merely require generic computer implementation; and fail to transform the abstract idea into a patent eligible invention. After Alice decision USPTO established 2-part analysis for abstract idea Seeing more 101 rejections being tagged 'abstract idea' Lower courts applying Alice decision to invalidate claims
- 3. Nelson Mullins Riley & Scarborough LLP 2-Part Analysis for Abstract Idea First, perform the statutory category test If a claim is not directed to one of the four statutory categories (i.e., process, machine, manufacture, or composition of matter), reject the claim 2-Part Analysis for Abstract Idea Determine whether the claim is directed to an abstract idea Examples: fundamental economic practices, certain methods of organizing human activities, an idea itself, or mathematical formula If then, determine whether the claim amounts to significant more than the abstract idea itself, for example: Improvements to another technology or technical fields; Improvements to the functioning of the computer itself; or Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment7
- 4. Nelson Mullins Riley & Scarborough LLP Tip #1: Alice-"abstract idea" The Alice Court did not provide a definition of "abstract idea" However, the Court appears to limit the "abstract idea" to be: A fundamental and long prevalent, and Well-known and widely used for long years. Such as, hedging or intermediated settlement Distinguish from Alice-"abstract idea" Argue that the subject matter of the invention is relatively new and/or confined to a specific technological field Argue that the invention provides a practical use If the invention is not commerce or finance related, it may be worthwhile to argue that the difference too
- 5. Nelson Mullins Riley & Scarborough LLP Tip #2: More Steps than the Abstract Idea Draft claims to recite more than instructions to apply the alleged abstract idea Include several detailed method steps which cannot be inferred from the abstract idea Diamond v. Diehl Alice Court treats Diehl's claims amounting "significantly more" Diehl's claims recite an abstract idea in the form of formula, but include the additional steps of feeding temperature measurement to a computer; and using the computer to apply the formula to calculate remaining cure time
- 6. Nelson Mullins Riley & Scarborough LLP Tip #3: Technical Elements and Solutions Draft claims to recite technical elements Specifically, recite technical solutions to a technical problem Include hardware elements Merely reciting a generic computer implementation does not pass Alice-test In the specification, Discuss technical operations and technical improvements Discuss structural elements, specifically hardware
- 7. Nelson Mullins Riley & Scarborough LLP Tip #4: Generic Computer Implementation The claims reciting methods in terms of a generic computer implementation are not automatically patent-ineligible. Alice decision or 2-part analysis do not support this conclusion For a rejection under the ground that the claims recite a generic computer implementation, Remind the Examiner on the 2-part analysis that the Examiner has the burden to prove that the claims are drawn to an "abstract idea."
- 8. Nelson Mullins Riley & Scarborough LLP Tip #5: Support in the Specification Always include hardware support in the specification To save unnecessary argument that "the hardware is implicitly or inherently supported."
- 9. Nelson Mullins Riley & Scarborough LLP Reference USPTO Memorandum: Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et. al. Robert Plot kin, A Post-Alice Playbook: Practical Strategies for Responding to Alice-Based Rejections
- 10. Nelson Mullins Riley & Scarborough LLP Info Lewis Lee Patent Attorney @ Nelson Mullins lewis.lee@nelsonmullins.com