Alice in IP-Land: Don’t Tumble Down the Rabbit Hole


One of the most monumental Supreme Court cases in patent law is Alice Corp. v. CLS Bank International (“Alice”). In a nutshell, Alice involves whether computer-related subject matter is patent eligible. Last year, the United States Supreme Court held that Alice Corp. should not have been granted a patent by the United States Patent and Trademark Office (USPTO). Following the Court’s decision to invalidate Alice Corp.’s patent, the USPTO issued Interim Guidance on Patent Subject Matter Eligibility and examples of abstract ideas to help inventors, applicants, and attorneys understand how a USPTO patent examiner would analyze a patent application and determine whether the subject matter of the application was patent eligible. However, there was still confusion regarding what subject matter could be patented. Sadly, even patent examiners were tumbling down what seemed like a never-ending rabbit hole in IP-land. Last week, to help bring about a better understanding of patent subject matter eligibility, the USPTO issued new guidance and examples. So, what has the USPTO taught us?

Two-Part Analysis for Determining Subject Matter Eligibility

In order to successfully patent any subject matter, a patent examiner will have to apply the following two-part test during examination of the patent application.

1. Is the claim of the patent application directed to an abstract idea?

2. If so, are there other elements in the claim sufficient to ensure that the claim amounts to significantly more than the abstract idea itself?

The challenges associated with the two-part test include determining what ideas are abstract and what amounts to significantly more than the abstract idea itself, both of which are not clearly defined neither by the Court nor the USPTO. But, the guidance and examples provided by the USPTO last week offer some help in answering these questions. In fact, the USPTO even organizes case law and examples in charts to help us understand what subject matter is patent eligible.

USPTO July 2015 Update: Subject Matter Eligibility Examples

A list of the subject matter of claims deemed patent eligible are listed below, and a complete analysis of each example can be accessed on the USPTO’s website.

1. Series of acts for distributing stock quotes to selected remote devices.

2. Series of steps for relocating textual information in an underlying window to an unobscured portion of the underlying window.

3. Series of acts including determining the temperature of the mold and providing that temperature to the computer.

4. Non‐transitory computer‐readable medium with stored instructions that are used to control a rubber molding press.

5. Internal combustion engine with an intake manifold, exhaust manifold, combustion chamber, throttle position sensor, exhaust gas recirculation valve and a control system comprising a processor and memory.

6. Series of steps for loading BIOS on a local computer system from a remote storage location.

Only time will tell if the confusion surrounding Alice and patent subject matter eligibility will be alleviated by the USPTO’s recent update. With software related patent application bearing the brunt of the confusion, some inventors and businesses are paying closer attention to types of intellectual property outside of patents including copyrights and trade secrets to gain protection for software-related ideas. Because the process of applying for a patent and successfully getting a patent granted is such a complicated process, even outside of the software technology area, a skilled patent attorney will provide you with your best shot at getting a patent. Further, a skilled patent attorney can help you determine whether a patent, copyright, and/or trade secret application should be filed, so that you will not tumble down the rabbit hole in IP-Land.


About the Firm:

Klemchuk LLP is a litigation, intellectual property, transactional, and international business law firm dedicated to protecting innovation. The firm provides tailored legal solutions to industries including software, technology, retail, real estate, consumer goods, ecommerce, telecommunications, restaurant, energy, media, and professional services. The firm focuses on serving mid-market companies seeking long-term, value-added relationships with a law firm. Learn more about experiencing law practiced differently and our local counsel practice.

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