Tuesday, August 5, 2014

USPTO Commissioner for Patents Explains the USPTO Implementation of Alice v. CLS Bank

The Supreme Court decision in Alice v. CLS Bank has had lots of critical commentary. Perhaps the most warranted is Alice affords at best murky guidance for decision makers (e.g., judges and examiners) seeking to determine if a software invention is an abstract idea. Many are puzzling over what the USPTO will consider patent eligible in the realm of business software. And this is not an academic point.

At least the USPTO is seeking to help the public. Recently, USPTO Commissioner for Patents Peggy Focarino posted Update on USPTO's Implementation of 'Alice v. CLS Bank'.

The Commissioner states the Supreme Court held the claims to "a computerized scheme for mitigating settlement risk" patent ineligible because they are drawn to an abstract idea. Somehow this reminds how the Court deleted many claim limitations to find the claim was a "scheme for mitigating settlement risk" then an abstract idea. This analysis has no objective principle and it gives no real credit to way applicant wrote the claimed invention. The scope of the claim is entirely up to the decision-maker. If the decision-maker is "anti-patent" the claim is paraphrased to a pithy gist that is abstract, the stripped out limitations are then brought back into the analysis but somehow deemed to be insufficient to render the claim patent eligible, and the applicant or patent owner is turned away for the audacity of seeking a patent on an abstract idea. 

On June 25, 2014, she notes the USPTO "issued preliminary examination instructions to assist examiners when evaluating subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas, in view of Alice Corp." Nice document but I don't see how to resolves what is an abstract idea anymore than the case.

Ms. Focarino notes the USPTO examiners reviewed a small group of applications (note actual number was not given) likely affected by the Alice and withdrew notice of allowances (i.e., withdrew from issuance) if the application includes one or more claims reciting an abstract idea and no more than a generic computer to be reexamined by the original examiner in light of Alice.

Of course, the USPTO can withdraw applications from issuance, but should probably just send all applicants a check rather than saying they must now request refunds.

I expect the public comments on the preliminary examination instructions to sound much like Sean Sullivan's comment to Ms. Focarino post:

"The problem with the preliminary examination instructions and the withdrawal of the notices of allowance is that there is no guidance as to how an "abstract idea" is determined. The post-Alice office actions have offered no analysis of whether a claim is drawn to an abstract idea, but rather a mere conclusory statement that the claim is abstract. This appears to have resulted in a per se exclusion of business method patents, which impermissibly broadens the scope of the Supreme Court decisions on subject matter eligibility."

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