After the US Supreme Court’s decision in Alice Corp., the USPTO changed its approach to examining patents (in particular, software patents).  The new approach provides insight to how the USPTO construes the Alice Corp decision.

The USPTO’s new approach is memorialized in a memo issued by the Deputy Commissioner for Patent Examination Policy.  According to the memo, the USPTO previously analyzed claims involving laws of nature using the criteria set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. _ (2012) (Mayo).  After Alice Corp., however, the USPTO will be applying the Mayo criteria  not only to claims involving laws of nature, but also claims involving abstract ideas.  The memo goes further to articulate the examination process to be applied in these cases.

Fortunately, the process is simple.  First, determine whether or not an abstract idea is being claimed.  If so, proceed to the second step. Second, determine whether something “significantly more” is being claimed.

How are examiners supposed to determine whether an abstract idea is being claimed?  First, they are to “tread carefully” since all inventions involve “at some level” involve abstract ideas.  Second, if it involves any of the following, you might be dealing with an abstract idea:

• Fundamental economic practices;

• Certain methods of organizing human activities;

• “[A]n idea of itself;  or,

• Mathematical relationships/formulas

That’s it.  That is all the guidance examiners have to work with.

For the second step, examiners are instructed to determine whether 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.  If so, then the applicant has, presumably, satisfied the “something significantly more” than an abstract idea requirement.  Again examiners are provided with examples.

If the limitations fall into one of the following categories, it may qualify as “something more.”

• Improvements to another technology or technical fields;

• Improvements to the functioning of the computer itself; and

• Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.

If the limitations fall into one of the following categories, it does not qualify as “something more.”

• Adding the words “apply it” (or an equivalent) with an abstract idea, or mere instructions to implement an abstract idea on a computers;

• Requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry.

Again, that’s it.  That is all the guidance examiners have to work with.

With only this broad and high-level guidance, it is not hard to imagine that different reasonable examiners will apply this guidance differently.  In fairness to the USPTO, this guidance is faithful to the Alice Corp.  Thus, to that extent, the shortcomings lie with the lack of guidance provided by the Supreme Court.

As a final note of hope, the memo expressly provides that the USPTO is still in the process of reviewing the Alice Corp. decision and that “further guidance will be issued after additional consideration of the decision and public feedback in the context of the existing law …”