Out of Wonderland from Diehr to Aatrix: Overcoming Section 101 Rejections

Westlaw Journal Intellectual Property

In June 2014 the U.S. Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), removed the presumption that software operating on standard hardware components could avoid being deemed an abstract idea, even if the claim language was sufficiently tied to a machine.

This prompted fear of a dramatic rollback of patent eligibility under Section 101 of the Patent Act, 35 U.S.C.A. § 101, for many software-based inventions.

The Supreme Court had established a two-part test for Section 101 evaluations in Mayo Collaborative Services v. Prometheus Laboratories Inc., 132 S. Ct. 1289 (2012). Alice extended the Mayo test to software inventions.

Step 1, known as the “filter step,” determines whether the claims at issue are directed to a patent-ineligible concept, such as an abstract idea.

If the claims are considered abstract, the inquiry moves to step 2, which tests whether the elements of the claims contain an inventive concept sufficient to transform the abstract idea into a patent-eligible invention.

The court may look at 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 previously performed manually or already known in the industry.

Unfortunately, the Alice court did not provide specific guidance on when a claim reciting conventional components is or is not patent eligible.

Not surprisingly, Alice has led to some confusion, both among practitioners and examiners at the Patent and Trademark Office.

Even though a plurality of courts have interpreted and applied the Alice test, it is hard to draw clear conclusions from them.

The PTO has issued various examination guidelines, amounting to over 120 pages of instruction, examples and reference tools.

These guidelines attempt to create order out of cases that are often confusing, inconsistent and hard to follow. It is not entirely surprising, therefore, that examiners are just as confused as practitioners.

Set out below are a few steps that may alleviate some of the confusion and provide guidance in overcoming a “101 rejection.”

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“Out of Wonderland from Diehr to Aatrix: Overcoming Section 101 Rejections,” by Jon Grossman, Anastasia Dodd, and Alexander Perry was published in Westlaw Journal Intellectual Property (Vol. 25, Issue 4), a Thomson Reuters publication, on June 6, 2018. Reprinted with permission.

This article is based from the whitepaper, Out of Wonderland from Diehr to Aatrix: 3 Steps to Overcoming 101 Rejections, published in April 2018 by Blank Rome LLP.