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Wednesday, December 11, 2019

U.S. PTO issues another round of guidance on subject matter eligibility

By Jessica Karmasek | Aug 12, 2015

The U.S. Patent and Trademark Office in Alexandria, Va.

WASHINGTON (Legal Newsline) - The U.S. Patent and Trademark Office has issued another round of “examination guidance” on subject matter eligibility, more than a year after the U.S. Supreme Court ruled some software method and systems patents are invalid.

The PTO has published its examination guidance three times since Alice Corp. v. CLS Bank International was decided -- in June and December 2014 and, most recently, on July 30.

The July guidance gives more examples of subject matter eligible claims in various technologies. It also provides sample analyses applying considerations by the Supreme Court and the U.S. Court of Appeals for the Federal Circuit for determining whether a claim is subject matter eligible under Section 101.

Section 101, only a sentence or two long, describes the four categories of inventions that it declares eligible to be considered to be patented. They include: machines, compositions of matter (i.e. pharmaceuticals), articles of manufacturing (i.e. tools) and processes or methods.

According to the July guidance, examiners must present a prima facie case -- meaning there is enough evidence for there to be a case to answer -- that claims to be rejected under Section 101 are subject matter ineligible.

The requirement is intended to guide examiners “in satisfying their burden and ensuring that they reject on eligibility grounds only where appropriate.”

In addition, the July guidance advises patent examiners to “stay within the confines of the judicial precedent” and “ensure that a claimed concept is not identified as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea.”

In its June 19, 2014 ruling, the Supreme Court said the claims in Alice were drawn to an abstract idea.

Implementing those claims on a computer was not enough to transform the idea to a patentable invention, the justices ruled.

CLS originally sued Alice in the U.S. District Court for the District of Columbia in 2007, seeking a declaratory judgment that Alice’s patents were invalid and unenforceable and that the bank did not infringe them.

Alice, which countersued, claimed CLS started using their technology in 2002.

Alice asserted four patents -- U.S. Patent Nos. 5,970,479; 6,912,510; 7,149,720; and 7,725,375 -- against CLS, all on electronic methods and computer programs for financial-trading systems.

In 2013, the Federal Circuit -- which handles all U.S. patent appeals -- ruled 7-3 against patent eligibility of the method claims and 5-5 on the system claims, leaving a lower court’s ruling that the system claims were ineligible in place.

The Supreme Court’s opinion affirmed that ruling, again deeming all of Alice’s claims ineligible.

However, the decision provided very little to no legal guidance to lower courts on how to decide if a computer-generated technology is patentable.

So, about a week after the ruling and again in December, the PTO provided its examiners with guidance on software patents.

The PTO said it is “interested” in receiving public feedback on its July guidance.

For more information on how to submit comments, click here. They will be accepted until Oct. 28.

From Legal Newsline: Reach Jessica Karmasek by email at

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