Alice: the fallout continues


Marina Portnova and Dmitry Andreev

Alice: the fallout continues

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The US Supreme Court’s Alice decision does not provide a bright line test for subject matter eligibility, and patent applicants are therefore advised to follow several steps when drafting applications, say Marina Portnova and Dmitry Andreev of Lowenstein Sandler.

The Alice v CLS Bank decision on patentability of subject matter has resulted in the opening of a floodgate of rejections of subject matter eligibility by the US Patent and Trademark Office (USPTO) alleging that the applicant’s claims are directed to an abstract idea. However, many patent practitioners feel that the office may have overreached itself in its efforts to follow the US Supreme Court’s guidance.

In Alice, the Supreme Court held that claims directed to an electronic escrow service for facilitating financial transactions were ineligible for patent protection since the claims were directed to an abstract idea, and implementing those claims on a computer was not enough to transform the abstract idea into patentable subject matter. Since the Alice decision did not provide a bright line test for what should be an abstract idea, the office responded by issuing examination guidelines and various training materials for the patent examining corps.

These examination guidelines and training materials have subsequently been updated several times to reflect numerous post-Alice decisions on subject matter eligibility by the US Court of Appeals for the Federal Circuit.

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