By: Robert R. Sachs
On June 25, 2014, just six days after the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the USPTO issued its Preliminary Examination Instructions (“Guidance”) in view of the case. Subsequently, the Office asked for public comments on the Guidance. Over forty companies, associations, law firms and individuals submitted comments, including myself. This series of posts is based on the comments I submitted to the Office.
In my view, the Guidance does not correctly interpret the Supreme Court’s decision, and does not provide specific guidance to the 7,000 examiners who will have to implement them on a daily basis. The Court’s decision was not written as a manual for how examiners are to evaluate patent applications, and so simply quoting and paraphrasing the decision (along with scrupulous footnoting) is not sufficient to provide a cohesive, workable framework for the examination of patent applications, particularly for computer implemented inventions. The core problem remains that examiners will be left to their own subjective evaluation and opinion of the patent eligibility of the claims before them. Already, the patent community is observing very different approaches from different examiners. This lack of uniformity leads to increased costs and delays in the examination of patents, as well as increased uncertainty by innovators as to the eligibility of their inventions in technologies that have been traditionally considered patent eligible.