On June 19, 2014 the Supreme Court decided Alice Corp v CLS Bank¹.
Justice Clarence Thomas authored the opinion.
Official SCOTUS portrait
See my previous blog for background on this case. As I expected the Supremes invalidated the patents and also as expected they failed to provide an answer on whether or not software is too abstract to be patentable or not and did not provide any specific requirements software must meet in order to be patented. Because that would take all the fun out of it.
However, they did throw us a plot twist and said that an old test, the Mayo² Test, should be applied to determine whether or not an abstract idea (actually in determining whether claims falling within any of the judicial exceptions to patentability at all) is able to be patented. Previously the Mayo test was only applied by the USPTO to examine patent claims involving laws of nature and was not used for claims involving abstract ideas. I think (I AM NOT A PATENT ATTORNEY, I AM NOT YOUR ATTORNEY) this meant Mayo was never used to determine patent eligibility of a software patent application. A description of the new and old test for abstract concepts is below.
Mayo provides a 2 part test to follow, assuming the claims fall within one of the patent eligible categories set out in 35 U.S.C. 101. 101 says “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
If the claims don’t fall within one of these categories you’re out. No patent for you.
(1) Are the claims directed to a patent ineligible concept? Meaning, is it directed to a law of nature, natural phenomena or abstract idea? If not, you’re cleared to move forward on the patent examination, at least under the Mayo test. If yes, “because laws of nature, natural phenomena, and abstract ideas are the basic tools of scientific and technical work” there is a second inventive part to the test.
(2) Does the additional information in the claims transform the abstract idea into a patent eligible application by adding enough elements or combination of elements “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [in eligible concept itself]?”
On this second part Justice Thomas said “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]” and that Mayo “made it clear that transformation into a patent eligible application requires ‘more than simply stat[ing] the abstract idea while adding the words ‘apply it’.” “Nor did Justice Thomas believe “limiting the use of an abstract idea ‘to a particular technological environment'” was enough to make an abstract concept patent eligible. “Stating an abstract idea while adding the words ‘apply it with a computer’ simply combines the two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to ‘implement an abstract idea on a… computer’, that addition cannot impart patent eligibility.”
A brief for Alice (relying on Bilski³ I think, the test for patentability of abstract concepts right up until Alice Corp.) argued that because a computer is tangible, instead of conceptual, that perhaps this was enough to clear it of the too abstract to patent bucket. Justice Thomas said this was “beside the point.” That “if that were the end of the 101 inquiry an applicant could claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept.” In closing Justice Thomas quoted Mayo and Flook⁴ in stating “This Court has long warned against interpreting 101 in ways that make patent ineligibility depend simply on the draftsman’s art. The concept of patentable subject matter under 101 is not ‘like a nose of wax which may be turned and twisted in any direction….’” and that holding Alice’s claims as patent eligible “would have exactly that same result”. Preach it Justice Thomas, preach it.
Previously, the USPTO relied on the Bilski test and the rules of 2106 II A and 2106 II B which stated that if a claim contained a judicial exception to patentability, then it had to be determined if the “judicially excepted subject matter has been practically applied in the product“. And that “a particular practical application is often self-evident based on the claim limitations that define the tangible embodiment.” In other words, if you have a tangible thing (meaning a computer) embodying your abstract concept (meaning escrow in Alice) you stood a decent shot at having your patent taken out of the too abstract to be patent eligible realm. No more under Alice Corp. Now simply having a tangible embodiment is not enough. Now you have to determine if the additional elements in the claim amount to significantly more than the abstract idea itself.
Following this ruling the USPTO scrambled to issue a preliminary set of examination instructions to their patent examiners based on the Alice ruling. The USPO has published and is seeking comments from the public on their instructions. That means YOU are invited to submit your comments to the USPTO with your take on their instructions. The form and also the preliminary instructions can be found here, deadline to submit comments is July 31, 2014.
What does this mean for existing software patents? I think a bunch could be invalidated for having relied on “apply it to a computer” as being enough to pass the Bilski test. Now they could be subject to cancellation for not being inventive enough to be significantly more than the abstract idea itself. Future patents will have to be written with enough detail to make it clear they are inventive enough claims to be significantly more than the abstract concept itself. The other day I saw someone Tweet “A patent lawyer describes pants.” In the post a patent application relating to Levi’s jeans was linked. That lawyer waxed poetic about pants in enough detail to take up 113 pages. If you have to go on for 113 pages about pants I can only imagine how long the new patent applications will need to be in order to pass the Mayo test.
I am not a patent lawyer and I am glad I am not a patent lawyer.
² Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 US ___ (2012).
³ Bilski v Kappos US 561 US 593 (2010).
⁴ Parker v. Flook, 437 US 584 (1978).