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Director's Forum: A Blog from USPTO's Leadership

Monday Aug 04, 2014

Update on USPTO's Implementation of 'Alice v. CLS Bank'

Guest blog by USPTO Commissioner for Patents Peggy Focarino

Today I would like to address our ongoing implementation of the June 19, 2014, unanimous Supreme Court decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. (Alice Corp.). In the decision, the court held claims to a computerized scheme for mitigating settlement risk patent-ineligible because they are drawn to an abstract idea. I want to share with you the steps we’re taking to implement the decision.

First, on June 25th, we 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.

Second, the USPTO has applications that were indicated as allowable prior to Alice Corp., but that have not yet issued as patents. Given our duty to issue patents in compliance with existing case law, we have taken steps to avoid granting patents on those applications containing patent ineligible claims in view of Alice Corp. To this end, our primary examiners and supervisory patent examiners (SPEs) promptly reviewed the small group of such applications that were most likely to be affected by the Alice Corp. ruling.

We withdrew notice of allowances for some of these applications due to the presence of at least one claim having an abstract idea and no more than a generic computer to perform generic computer functions. After withdrawal, the applications were returned to the originally assigned examiner for further prosecution. Over the past several days, our examiners have proactively notified those applicants whose applications were withdrawn. (Applicants who had already paid the issue fee for applications withdrawn from allowance may request a refund, a credit to a deposit account, or reapplication of the fee if the applications return to allowed status.)

This limited action was closely-tailored and taken specifically in reaction to the Alice Corp. decision. We do not anticipate further review of any applications indicated as allowable under this process, as examiners are currently following the Alice Corp. preliminary instructions during examination (i.e., prior to allowance).

Third, as we continue to study Alice Corp. in the context of existing and developing precedent, public feedback will assist us in formulating further guidance for our examiners. On June 30th, a Federal Register Notice was published to solicit written comments from the public on the preliminary examination instructions. The period for submitting those comments ended July 31, 2014. We appreciate the comments we have received to date. All input will be carefully considered as we work to develop further examination guidance, which we anticipate issuing this coming fall.

We look forward to working with our stakeholders in refining our examination guidance, and will continue to seek feedback as we implement changes as the laws evolve.

Comments:

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.

Posted by Sean Sullivan on August 05, 2014 at 10:10 AM EDT #

I am handling three patents that were being issued, but have been withdrawn per the above. In each instance, a boilerplate response has been sent. The Office is simply stating a conclusory subjective opinion, which prevents patent attorneys from addressing the USPTO concerns in a meaningful way. Worse, since the Examiners who initially believed the cases to be allowable yet have had their initial assessment forcibly changed, it is exceptionally unlikely that rationale arguments based on the Court's opinion will result in "pulled" cases being allowed again. Hence, appeals based on ill-formed rejections will be necessary.

Posted by Brian Buchheit on August 07, 2014 at 12:12 PM EDT #

The English language consists of 26 characters. They can only be combined in a discrete way. There are only so many words and so many word combinations. I realize this is a leap to copyright law. Under Alice, combining words in the English language into a new order is not novel. If this is the case, then Stephen King can’t own his novels and Amazon could freely operate by copying his work verbatim. The Supreme Court took a major step to hurt small business innovation. Individuals spend years working on their ideas and the Supreme Court just moved the ball.

Posted by Chris Norman on August 28, 2014 at 01:06 PM EDT #

There is a very distinct difference between an "idea" and a well thought out concept by one skilled in the art of a field. Apple invented the iphone. Prior to the IPhone we had flip phones and other phones, sticks etc. Is the IPhone a novel invention? Isn’t it comprised of computer chips that existed? It is essentially a mini-computer. Did Apple receive many patents for the IPhone? Yes. Would Apple today after Alice? Was it an improvement?

Posted by Chris Norman on August 28, 2014 at 01:06 PM EDT #

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