Overcoming Alice: Guidelines for Inventors of Computer-Based Inventions

June 13, 2017
Patterson Thuente IP

Get some guidance on how to write patents for computer-related technology and download our handy invention disclosure checklist.

Inventors and counsel alike are feeling a little bonkers lately in their quest to avoid and overcome section 101 rejections in the areas of computer-related technologies. Beginning in the 1970’s, when computer software technology was rapidly developing and being patented, the U.S. Supreme Court issued several decisions that helped delineate between patent-ineligible abstract ideas being carried out using a computer, and patent-eligible inventions that may be implemented with the aid of a computer.

In creating judicial exceptions to the statutory language of section 101, the Supreme Court was articulating the policy that no one should deserve a patent on the basic building blocks of innovation: laws and products of nature, natural phenomena, and abstract ideas. The Court earlier established this bedrock principle in denying Samuel Morse the patenting of “communicat[ing] information at a great distance by using the electromagnetic force” in the 1850’s.¹

The turn of the most recent century ushered in unprecedented growth in the use of computers in nearly every aspect of our society, including in commerce and business processes, as well as a dramatic increase in the use of the patent system to protect those innovations. The U.S. Supreme Court’s landmark ruling in Alice² extended its recently established two-step Mayo³ test into software and business processes, striking down patent protection for the use of a computer to implement business methods that are based on abstract ideas.

 

Even though modern business processes necessarily require the use of a computer, those seeking patent protection on their valuable business processes must carefully draft their patent application and arguments used during patent prosecution to survive the two-part subject matter eligibility test for products and processes currently being used by the U.S. Patent & Trademark Office.

Although the Federal Circuit has helped clarify the use of the two-part subject matter eligibility test in cases after Alice, the fundamental process (and its associated challenges) remain essentially the same. First, determine if the invention is directed to a statutory category─ a process, machine, manufacture, or composition of matter (it must be to survive the test.) Next, determine if the invention is directed to an abstract idea or other judicial exception. If it is, without reciting significantly more, then the test fails and the invention is not patent-eligible.

Because many inventions for software solutions and business methods may be rooted in the practical application of one or more abstract ideas, skill must be utilized in drafting a patent application to establish additional elements that amount to significantly more than the judicial exception in order to survive the two-part Mayo/Alice test. This is where the support of a skilled patent practitioner may help assure a software patent application is successful.

We have created a checklist for inventors that includes helpful questions to ask when writing invention disclosures for computer-based technologies. Download it here!

¹O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1853).

²Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014).

³Mayo v. Prometheus, 132 S. Ct. 1289 (2012).