For the third time this year, the U.S. Supreme Court has placed further limits on the scope of patent protection. In Alice Corp. v. CLS Bank International, the Court’s ruling clarifies that inventions incorporating an “abstract idea” carried out by a general-purpose computer fall within the judicial exceptions to patentable subject matter.
Specifically, in striking down Alice’s patents, the Court applied a two-part test that it introduced in 2012’s Mayo Collaborative Services v. Prometheus Laboratories, Inc. – which is the same test that led to the Federal Circuit’s fractured en banc opinion in the first place. Under that two-part test, the Court found (1) that the claims were drawn to the abstract idea of “intermediated settlement,” which is a “fundamental economic practice long prevalent in our system of commerce,” and (2) that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”
Unfortunately, the Court still did not directly address several of the key questions surrounding the two-part Mayo test, such as how to determine whether a claim is directed to an abstract idea or how much “more” is required to make such a claim patent-eligible. Thus, the ultimate impact of this decision is not entirely clear. Nevertheless, if you look closely enough, the Alice decision does seem to provide some additional guidance on these issues.
This webinar will cover the potential implications of the Alice decision on patents directed to computer-implemented inventions. Topics will include:
Presenters: MBHB attorneys Rory P. Shea and Michael S. Borella, Ph.D.
Access an archived audio version of this webinar here. NOTE: MCLE credit is not available for this archived recording.
McDonnell Boehnen Hulbert & Berghoff LLP is committed to educating clients and friends of the firm with respect to significant developments and trends in the areas of intellectual property law.