Several recent decisions by the U.S. Court of Appeals for the Federal Circuit have untangled crucial uncertainties plaguing software patent applicants following the outcome of Alice Corp. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014). Namely, the Federal Circuit’s rulings have addressed the validity of claims under by 35 U.S.C. Section 101, which covers subject matter eligibility, and 35 U.S.C. Section 112(f), which covers “means-plus-function” limitations.

Section 101: The Abstract Idea Test

In its Alice decision, the Supreme Court effectively subjected scores of software-related patents to increased risk of invalidation by enunciating a two-part test, originally put forward during Mayo Collaborative Services v. Prometheus Laboratories, 132 S. Ct. 1289, 1293 (2012), to determine whether a claim was nothing beyond an “abstract idea” and therefore ineligible for patenting. Under the two-part test of Alice/Mayo, a court (or patent examiner) first determines whether a claim is “directed to” an abstract idea. If this threshold determination is met, the claim must be shown to encompass an element or combination of elements that constitute something “significantly more” than the ineligible abstract idea, or that the claim elements “transform the nature of the claim into a patent-eligible application.”

This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.

To view this content, please continue to their sites.

Not a Lexis Advance® Subscriber?
Subscribe Now

Not a Bloomberg Law Subscriber?
Subscribe Now

Why am I seeing this?

LexisNexis® and Bloomberg Law are third party online distributors of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® and Bloomberg Law customers are able to access and use ALM's content, including content from the National Law Journal, The American Lawyer, Legaltech News, The New York Law Journal, and Corporate Counsel, as well as other sources of legal information.

For questions call 1-877-256-2472 or contact us at [email protected]