Don Daybell Discusses Patent Eligibility According to Alice

Law360
January.27.2015

Orrick intellectual property lawyer Don Daybell recently spoke with Law360 about the list released by the US Patent and Trademark Office (USPTO) that applies the Supreme Court's decision in Alice Corp. v. CLS Bank International to hypothetical patents. In June 2014, the Supreme Court held that abstract ideas implemented with a computer, such as Alice Corp.’s method of managing risk in financial trading, are not patent-eligible.

According to Mr. Daybell, many of the USPTO’s examples show that in order to be patent-eligible under Alice, inventions need to have a component that improves the functioning of a computer, rather than simply using a computer to make an existing process run more efficiently. The examples that the USPTO found to be patent-ineligible tended to be broad and involved things that had been done without a computer for a long time, he said.

"Anything the office can do to improve the predictability of the examination process is nice to see from a practitioner's standpoint,” Mr. Daybell said, adding, “This gives all practitioners some additional insight into what examiners are being instructed to consult when making their decisions." However, he noted that because the examination of any patent application is so fact-intensive, the specific examples provided by the by USPTO have a fairly limited practical value for determining whether any future application is patent-eligible or not. "Even with this guidance, it's tough for any practitioner to know where that line is drawn," he concluded.