While the commentary on the Supreme Court’s Alice decision continues to provide a veritable cottage industry for law professors and other interested parties, the most important commentary on the decision yet has come in the form of Preliminary Examination Instructions issued to the Patent Examining Corps in the US Patent Office.
The Patent Office issued the Preliminary Examination Instructions with admirable rapidity, and while the Instructions can be criticized for vagueness, that flaw flows directly from the Alice decision itself. The Instructions advise Examiners to follow a two part process.
For Part 1, an Examiner must determine whether a claim is directed to an abstract idea. The instructions acknowledge, as did the Court, that all inventions necessarily involve abstract ideas, and therefore admonishes Examiners that “an invention is not rendered ineligible simply because it involves an abstract concept. In fact, inventions that integrate the building blocks of human ingenuity into something more by applying the abstract idea in a meaningful way are eligible.” Instructions, p. 2. The Instructions provide examples, taken directly from the Court’s opinion, of abstract ideas such as “[f]undamental economic practices,” “[c]ertain methods of organizing human activities,” “[a]n idea of itself,” and “[m]athematical relationships/formulas.”
An Examiner reaches Part 2 of the Instructions only if Part 1 concludes that a claim is directed to an abstract idea. In such a case, an Examiner must next “determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.” Instructions, p. 3 (emphasis in original). Once again, the instructions use examples from the Court’s opinion to identify what may constitute “significantly more” during examination, such as “[i]mprovements to another technology or technical field,” “[i]mprovements to the functioning of the computer itself,” and “[m]eaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.” Again in keeping with the Court’s decision, the Instructions note that simply adding the words “apply it” or the equivalent to an abstract idea and/or requiring no more than a “generic computer” performing “generic computer functions that are well-understood, routine and conventional activities previously known to the industry” fail to render an abstract idea patentable.
Essentially, the Preliminary Instructions advise Examiners to take the Court’s decision in Alice and apply it. Ironically, what works for patent examination does not work for patent claim drafting, but the larger problem remains: we just don’t really know what “it” is that we are to apply. Only time, experience, and possibly another Supreme Court opinion will clarify the situation further.