<\/span><\/h3>\n\n\n\nThe Supreme Court relied upon its decisions in the Mayo vs. Prometheus and Bilski vs. Kappos cases to pass another landmark judgment in the Alice vs. CLS Bank case in 2014. In this case, the patent at issue disclosed a computer-implemented scheme for mitigating “settlement risk”, i.e., the risk that only one party to a financial transaction will pay what it owes by using a third-party intermediary. In addition, the issue, in that case was whether certain claims about a computer-implemented, electronic escrow service for facilitating financial transactions covered abstract ideas ineligible for patent protection. Until this point, the software could not be patented unless it formed an element within hardware or a system. However, the software patents went for a toss after the Supreme Court ruling in the Alice vs. CLS Bank case.<\/p>\n\n\n\n
The court observed that an abstract idea does not become patent-eligible by being implemented on a generic computer. The court used Mayo as a precedent and stated that an abstract idea could not be patented because it is implemented on a computer. The Alice vs. CLS Bank case verdict formed a suitable precedent for invalidating some of the more egregious software that seeks patent protection. The Alice Case had a great effect on patents for computer-related inventions, particularly software patents. Some important questions were left unanswered after the Alice case, such as – what test should the examiners adopt to determine whether a computer-implemented invention is a patent-ineligible abstract idea? Could a patent-ineligible subject matter be made patentable by the presence of a computer-related invention in a claim?<\/p>\n\n\n\n
The Alice vs. CLS Bank, along with the Mayo vs. Prometheus case paved way for examining subject matter eligibility under U.S.C. 101. It also considered different approaches to conclude about patentability or non-patentability. As a result, the Supreme Court adopted a decisional approach under the Alice\/Mayo framework, which provides a series of steps (Figure 1) in which the patent examiner, administrative tribunal or reviewing court has to answer a set of questions to determine whether the patent claim in question constitutes patent eligible subject matter.<\/p>\n\n\n\n
The Alice\/Mayo framework includes step 1, step 2A and step 2B. Step 1 requires the concerned reviewing authority to answer the first question. The first question is whether the patent claim covers an invention from one of the four statutory categories of inventions defined in 35 U.S.C. \u00a7101 (a machine, process, composition of matter, or article of manufacture). The Alice\/Mayo framework is a simple yet complicated series of yes or no questions. The reviewing authority must move forward to the next step or the next question depending on the answer to the previous question. For example, at step 1, if the answer is yes, the reviewing authority must move on the next step (step 2A). Else, if the answer is no (i.e., meaning that the invention does not lie with the four statutory categories of invention), the reviewing authority must declare the claims to cover patent ineligible subject matter.<\/p>\n\n\n\n
The Alice\/Mayo framework truly initiate at step 2A where the reviewing authority is required to answer whether the patent claims cover one of the three specifically identified judicial exceptions to patent ineligibility. Currently, there are three judicial exceptions, namely, laws of nature, natural phenomena and abstract ideas. If the patent claim does not fall under any of the three judicial exceptions, the patent claim is said to cover patent eligible subject matter. Else, the reviewing authority must move on to the next inquiry if the patent claim covers any of the three judicial exceptions.<\/p>\n\n\n\n
The third and final question which ultimately decides whether the patent claim will be rejected under 35 U.S.C. 101 falls under step 2B. Step 2B states that the reviewing authority must answer if the inventive concept that is covered in the claimed invention was \u201csignificantly more\u201d than the judicial exception, or whether the claimed invention did not have \u201csignificantly more\u201d and, therefore, was seeking to merely cover the judicial exception. If additional elements other than the judicial exception is not found in the claimed invention, then the reviewing authority moves forward with the 35 U.S.C. 101 rejections. Else, if the claimed invention adds significantly more and does not merely cover the judicial exception, the claimed invention covers patent eligible subject matter. The abstract idea exception occurs when the judicial exception is at play when computer implemented inventions are claimed. Until the end of 2019, the Supreme Court or the USPTO did not define “abstract idea”. As a result, U.S. Patent attorneys and professionals in the IP world were still not clearly aware of what invention is an “abstract idea” and what is not.<\/p>\n\n\n
\n
Figure 1: \u00a7101 Subject Matter Eligibility Test<\/em><\/strong><\/figcaption><\/figure>\n<\/div>\n\n\n <\/strong><\/p>\n\n\n\n<\/span>Final Thoughts<\/span><\/h2>\n\n\n\nFrom the above discussed points, we can conclude that some inventions can surpass the abstract idea test and not all software inventions are necessarily abstract. It cannot be broadly held that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two. There have been some improvements in computer-related technology which, when appropriately claimed, are undoubtedly not abstract. The Supreme Court of the United States has recognized the importance of software and its innovation potential. This has encouraged innovators to file more and more patent applications related to the software domain. <\/p>\n\n\n\n
Therefore, it is of paramount importance for the patentees to clearly define and explain how an invention improves over the prior-art. This is crucial in the case of improvement in computer related technology. Therefore, years of patent prosecution in the U.S. have paved the way for greater clarity on patentability and have given birth to a credible and comprehensive patenting system.<\/p>\n\n\n\n
Sagacious IP\u2019s Patent Filing and Prosecution service enables enterprises to protect their inventions. Our highly skilled patent attorneys assist clients in preparing a strong patent draft that build their application for a smoother review process. Hence, it is wise to outsource the task of patent prosecution to an expert that has the desired skill set. Our team of registered Indian patent agents are adept in guiding businesses by offering them end-to-end support. Moreover, our collaboration with patent attorneys worldwide offers a technical finesse that can help companies and individuals make the right decisions. Click here<\/a> to know more about our Patent Filing and Prosecution service.<\/p>\n\n\n\n-Dhruv Kaushik (Intellectual Property Prosecution) and the Editorial Team<\/p>\n\n\n\n
<\/span>Having Queries? Contact Us Now!<\/span><\/h3>\n\n\n\n