U.S. Patent and Trademark Office Preliminary Examination Instructions

Alice Corporation v. CLS Bank

Last week, in response to the unanimous decision of the Supreme Court of the United States in Alice Corporation Pty. Ltd. V. CLS Bank International et al. (U.S. June 19, 2014), the United States Patent and Trademark Office issued a Memorandum entitled Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. V. CLS Bank International, et al., dated June 25, 2014. In the Memorandum, the USPTO sets forth its examination guidelines for USPTO personnel to use when determining subject matter eligibility under 35 U.S.C. 101 of claims involving abstract ideas.

The Patent Office has taken the position that the same analysis is to be applied for all types of judicial exceptions and to all categories of claims (e.g., product and process claims). Otherwise, the basic inquiries for subject matter eligibility remain the same.

The memorandum states that an analysis of product or process claims involving an abstract idea should follow the Mayo two-part analysis for determining subject matter eligibility, namely:
Part 1: Determine whether the claim is directed to an abstract idea; and
Part 2: 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.

After conducting the two-part analysis, the examination is to continue, regardless of whether a rejection under § 101 has been made, to determine patentability in accordance with the other requirements of 35 U.S.C. § 101 (utility and double patenting), non-statutory double patenting, and §§ 112, 102, and 103.

The USPTO is receiving public feedback on the Preliminary Alice Corp. Instructions. After the comment period, the USPTO will issue final examination guidelines.

Supreme Court of the United States remands Ultramercial Inc. v. Hulu LLC

The Supreme Court of the United States has issued an order remanding Wildtangent, Inc. v. Ultramercial, LLC, et al. (Ultramercial Inc. v. Hulu LLC) back to the United States Court of Appeals for the Federal Circuit. In its order, the Supreme Court granted the petition for a writ of certiorari, vacated the judgment, and remanded the case to the United States Court of Appeals for the Federal Circuit for further consideration in light of Alice Corp. v. CLS Bank Int’l, 573 U. S. ___ (2014). More to follow