Intellectual property attorneys working with technology companies have been spending the four years since the U.S. Supreme Court’s decision in Alice Corp v. CLS Bank International evaluating how the U.S. Patent and Trademark Office would interpret subject matter eligibility under Section 101 of the U.S. Patent Act in light of the opinion.
While not saying so outright, that opinion effectively said much software was not eligible to be patented, as the court laid out a test to determine whether claims in a patent application are tied to an abstract idea. Since then, the question of whether software would overcome the test has been lingering over many inventors’ minds.
In January of this year, it seemed as though muddy waters were going to be cleared with guidance from the USPTO saying how it would define an abstract idea.
“Since the Alice/Mayo test was announced and began to be extensively applied, the courts and the USPTO have tried to consistently distinguish between patent-eligible subject matter and subject matter falling within a judicial exception. … Many stakeholders, judges, inventors, and practitioners across the spectrum have argued that something needs to be done to increase clarity and consistency in how Section 101 is currently applied.”
The guidance attempts to define what an abstract idea is under Section 101 and lays out how a patent claim that recites an abstract concept can still be patent eligible.