As we’ve discussed in previous blogs like this one, the US Supreme Court’s ruling in the Alice vs. CLS Bank case changed the patent law landscape, especially with respect to software patents.

Ever since Alice, courts and patent examiners have struggled to determine what is and isn’t patentable under the new Alice standards.

Under step 2A of an Alice analysis, a patent examiner must first:

determine whether the claim is directed to a law of nature, a natural phenomenon, or an abstract idea (judicial exceptions). If no, the claim is eligible and examination should continue for patentability. If yes, proceed to Step 2B to analyze whether the claim as a whole amounts to significantly more than the exception.

Then, in step 2B, the examiner must

determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception. If no, the claim is ineligible, and should be rejected under 35 U.S.C. § 101 as being drawn to ineligible subject matter… If yes, the claim is eligible. In either case, examination should continue for patentability.

Recently, the US Patent Office (USPTO) released a memo that affects how patent examiners should approach step 2B of an Alice-based analysis of a patent application.

In the memo, the “USPTO recognizes that unless careful consideration is given to the particular contours of subject matter eligibility, … it could ‘swallow all of patent law.'”

The memo addresses the recent Federal Circuit decision in the case of Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).

As the court noted in Berkheimer,

The second step of the Alice test is satisfied when the claim limitations “involve more than performance of “well-understood, routine, [and] conventional activities previously known to the industry.”

Berkheimer held that the question of whether certain claim limitations are well-understood, routine, or conventional activity under Alice Step 2B is an issue of fact.

The memo affirms that a patent examiner:

should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry…[and] such a conclusion must be based upon a factual determination…

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