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USPTO Issues Preliminary Examination Instructions in Light of Alice Corp. - U.S. Patent And Trademark Office

In Alice Corporation Pty. Ltd. v. CLS Bank International, el al., Case No. 13-298 (decided June 19, 2014)  (“Alice Corp.”), the Supreme Court unanimously held that the subject patent claims are not patent-eligible under 35 U.S.C. § 101.  The patents at issue are directed toward a process for mitigating “settlement risk,” i.e., for financial exchange transactions, in which a computer system is used as an intermediary between the parties to the transaction.  The patent claims include a method for exchanging financial obligations, a computer system configured to carry out the method, and a computer-program-product claim covering the same process.  The Court held that “the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”  Alice Corp., slip op. at 1.

In light of this decision, the United States Patent and Trademark Office published Preliminary Examination Instructions to guide the Examining Corps in weighing the subject matter eligibility of claims involving abstract ideas, and particularly computer-implemented abstract ideas, under 35 U.S.C. § 101.   The Office will accept public comments regarding Alice and these guidelines until July 31, 2014.  As these guidelines are preliminary, we expect that the Office will continue to consider the subject matter and issue further guidance after receiving public feedback.

Copyright © 2019, Sheppard Mullin Richter & Hampton LLP.


About this Author

Daniel N. Yannuzzi, Intellectual Property, Attorney, Sheppard Mullin, law firm

Daniel Yannuzzi is a partner and co-chair of the Intellectual Property Practice Group. He advises clients in all areas of intellectual property law, including patent and other intellectual property litigation, strategic portfolio development, technology licensing, and transactional matters.

Mr. Yannuzzi has extensive experience advising high-technology companies and their stakeholders on complex, business-critical IP matters. Mr. Yannuzzi's practice involves intellectual property litigation, with an emphasis on patent litigation; developing IP...