In early 2022, the Intellectual Property Owners (IPO) Association released an update to the White Paper and Patent Eligibility Tool. It is entitled 35 USC 101 Subject Matter Eligibility Cases – 2021 Update. The tool was first published in 2018 and updated in 2020 and again in 2021. Fresh IP patent attorney, John Bednarz, has been an author and contributor to the white paper since it was first published in 2018. This update to the law on software inventions can be viewed here.
It provides the most recent guidance on the caselaw surrounding patent subject matter eligibility as it relates to computer-implemented and software-related inventions.
Alice
In 2014, the case of ALICE CORPORATION PTY. LTD. v. CLS BANK INTERNATIONAL ET AL radically changed patent subject matter eligibility law. A two-step framework was introduced to determine whether a patent claim is directed to an abstract idea.
The first step of the framework is to examine whether the patent claim falls into one of the statutory categories a patent claim must fall into. The categories are a process, machine, manufacture or composition of matter.
The second step relates to judicial exceptions to these categories. These are whether the claim is directed to a law of nature, a natural phenomenon, or is an abstract idea. If a claim is directed to an abstract idea, the court must ascertain whether the claim recites additional elements. These additional elements must amount to “significantly more” than that abstract idea.
Difficulties after Alice
In Alice, the court failed to clarify what “abstract” and “significantly more” amount to. As a result, it narrowed that which could be considered eligible. A broad range of inventions were rendered as potentially “abstract ideas”, and, hence, patent-ineligible.
Since Alice, there have been attempts by courts, such as the Federal Circuit, to attempt to clarify both when a claim is directed to an abstract idea, and the meaning of “significantly more”. Originally drafted in 2018, this white paper and tool provides easy access to this caselaw as well as examples provided by the U.S. Patent and Trademark Office.
The 2020 update
In early 2019, the U.S. Patent and Trademark Office (USPTO) published the 2019 Revised Patent Subject Matter Eligibility Guidance. In the 2019 Revised Patent Subject Matter Eligibility Guidance, the USPTO broke Step 2 of the Alice test into two prongs. Within Prong One, examiners evaluate whether a claim recites a judicial exception, e.g., an abstract idea. Within Prong Two, examiners determine whether a claim recites additional elements that integrate the exception into a practical application of that exception. In short, the Alice test now includes Step 2A that includes Prong One and Prong Two and also includes Step 2B – whether the claim recites additional elements which amount to significantly more than the abstract idea.
Much of the 2020 update to the white paper and tool was devoted to providing an assessment of new examples provided by the USPTO and how courts and the PTAB interpreted the 2019 Revised Patent Subject Matter Eligibility Guidance.
The 2021 update
This update provides assessments of recent Federal Circuit cases in which the framework has been applied since the 2020 update. It also provides selected Patent Trial and Appeal Board (PTAB) opinions which relate to AI technologies.
An updated mapping sheet maps important new Federal Circuit and PTAB case assessments. It also indicates U.S. Patent and Trademark Office (USPTO) examples that relate to similar software technology. The mapping sheet provides guidance aiding clarification of both prongs of Step 2 of the Alice test.
If you wish to discuss patentable subject matter and how it relates to software inventions or computer-implemented technology, please contact John Bednarz.
