Abstract

Despite recent technological advances, the statutory basis under which U.S. courts evaluate patent-eligible subject matter has remained substantially unchanged for over 200 years. As a result, the Supreme Court and the Federal Circuit have decided patent eligibility for software-based inventions without legislative input. Most notably, in Alice Corp. v. CLS Bank International the Supreme Court created a two-part test for analyzing eligibility that determines (1) whether a claimed invention is directed towards an abstract idea, and if so, (2) whether the claim recites "significantly more" such that the abstract idea is transformed into patent-eligible subject matter. This test has been criticized for its lack of clarity and predictability. Conversely, in European patent law, courts consult a statutory framework that excludes enumerated groups of unpatentable subject matter. Moreover, a claimed invention may avoid falling within one of the excluded groupings if it integrates the excluded subject matter into a practical, technical application. Interestingly, the United States Patent and Trademark Office ("USPTO") recently created a guidance document to help examiners apply the Alice two-part test consistently, and it is strikingly similar to the European approach to subject matter eligibility. Not only does this guidance document employ enumerated groups of excluded subject matter, it also states that a claimed invention may avoid falling within one of the excluded groupings if it integrates the excluded subject matter into a practical, technical application. Although the USPTO guidance document does not carry the force of law, it is likely to encourage legislative action amending the controlling statute, moving the United States closer to European patent law.

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