The U.S. Patent & Trademark Office recently released an updated (March 2018) Eligibility Quick Reference Sheet. While this serves as a guide for patent examiners, it is also a helpful resource for patent attorneys and agents faced with eligibility rejections under 35 U.S.C. § 101. This is of increased value in light of the 2014 Alice v. CLS Bank decision. The Eligibility Quick Reference Sheet categorizes patent eligibility decisions by outcome, identifying cases where the claims were found ineligible according to the Alice test (i.e. directed to an “abstract idea” and “not offering significantly more”), contrasted with cases where claims were found patent eligible.
The first two pages offer guidance in identifying “abstract ideas,” by providing exemplary decisions where claims were directed to “Fundamental Economic Practices,” “Certain Methods of Organizing Human Activity,” “An Idea ‘Of Itself,” and “Mathematical Relationships / Formulas.” Although the descriptions are brief, the synopsis of each category of abstract idea is a convenient starting point for evaluating the merit of a rejection.
The third page of the reference sheet outlines court decisions holding claims eligible according to both steps of the Alice decision. This is particularly useful for patent practitioners facing an Alice rejection under 35 U.S.C. § 101. For example, in the face of an Alice rejection, a ready list of cases where claims have been found eligible is available for review. Comparing the claims under prosecution to those from cases outlined in the reference sheet, provides a number of useful avenues for argument or amendment. Likewise, a review of patent eligible claims will help patent drafters craft claims sets that avoid potential eligibility issues altogether.
The Eligibility Quick Reference Sheet is one of many helpful patent resources available from the U.S. Patent & Trademark Office.