AI Inventions and Subject Matter Eligibility
In June 2014, the U.S. Supreme Court decided Alice Corporation Pty. Ltd. v. CLS Bank International, et al., where it removed the presumption that software operating on standard hardware components could avoid being deemed an abstract idea. The Alice court articulated a two-part patent eligibility test for software inventions.
Step one, known as the “filter step,” determines whether the patent claims at issue are directed to a patent-ineligible concept, such as an abstract idea. If the claims are considered abstract, the inquiry moves on to step two, which tests whether the elements of the claims contain an inventive concept sufficient to transform the abstract idea into a patent-eligible invention.
For the second step, a court assesses the individual or the ordered combination of claim limitations to test whether there is “something more” than the performance of well-understood routine and conventional activities.
As we wrote previously, Alice dramatically impacted the legal software protection landscape with scores of software patents being rejected and invalidated both by the U.S. Patent and Trademark Office (PTO) and courts at all levels. Alice’s worldwide impact was also profound—influencing foreign patent offices such as the European Patent Office to scale back software patent eligibility. Not surprisingly, Alice has been highly controversial with widespread criticism by practitioners, judges, and former PTO commissioners, to name a few.
The purpose of this article is to look at the very hot AI sector of the software industry and Alice’s impact on it. As with our prior articles covering software patent eligibility, this article focuses on providing practical guidance tips for drafting AI-directed patent applications that pass muster under Alice before the PTO and U.S. tribunals.
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"AI Inventions and Subject Matter Eligibility," by Jon Grossman was published in the November-December 2023 edition of the Intellectual Property & Technology Law Journal (Vol. 35, No. 10), a Wolters Kluwer publication. Reprinted with permission.