"Change is the essential process of all existence”, Commander Spock said in one of the last episodes of the original Star Trek series. Since the US Supreme Court published its long-awaited opinion on Alice v CLS Bank, many commentators have tried to use Alice in Wonderland references to describe the situation, but Commander Spock hit the mark.
The current situation of computer-implemented inventions in the US is far from clear. While David Kappos, former director of the US Patent and Trademark Office (USPTO), considers protection for software innovation to be intact, several others are of the opinion that gaining protection for computer-implemented inventions has now become harder, if not impossible. However applicants for a US patent in that field might at least hope to be spared different interpretations of the issue by the examiners, as the USPTO reacted quickly to Alice and issued Preliminary Examining Instructions.
Accordingly, examiners will look at all claims using a two-part analysis familiar from the Mayo v Prometheus case, ie, by determining:
- Whether the claims are directed to an abstract idea (part I); and
- In case an abstract idea is present in the claims, whether there is significant additional subject matter than the abstract idea itself (part II).
These Preliminary Examining Instructions were open for public comments until July 31, and might be changed depending on the submitted comments.
Meanwhile, all parties interested will make use of the court’s decision to modify current proceedings or even to reopen closed cases. For example, Samsung is using Alice to challenge two Apple patents, which were used to attack Samsung in the past.
So, with all the heavily cited court opinions out there — Bilski, Mayo, and now Alice among them — the way patent applications and, in particular, their claims are examined and thus the way in which they should be drafted, has changed tremendously over recent years. This change requires constant attention by all practitioners, but following case law is an important obligation in every jurisdiction.
Read the full article in the World Intellectual Property Review magazine - September/October 2014 issue - PDF article attached.