The U.S. Patent and Trademark Office, on Jan. 7, issued new examination guidelines to address the often-criticized unpredictability with determining patent-eligibility of abstract ideas after the U.S. Supreme Court's decision in Alice v. CLS Bank (2014).

The unpredictability arises, in part, because whether a claim is considered to be directed to an abstract idea (Alice step 1) is controlled by precedent rather than by any definition of what an abstract idea is. Therefore, demonstrating patent-eligibility has invariably required making strained analogies to previously decided cases, even when the technologies involved are not at all similar.

For example, software applications almost always attempt to analogize to a first case that related to an improved structure of a database table (Enfish), while attempting to distance themselves from a second case that related to monitoring an electric power grid (Electric Power). This regime leads to a smattering of bewildering analogies. In just the past few months, applicants in ex parte appeals have analogized the following technologies to Enfish, even though none have anything to do with database tables:

  • Issuing employee compensation
  • Detecting signal patterns
  • Image capturing, trading securities
  • Selecting auction parameters
  • Controlling access to digital data
  • Computing navigation attitude
  • Creating social networks

In contrast, applicants have attempted to draw distinctions with Electric Power for the following technologies, none of which have anything to do with monitoring an electric power grid:

  • Online trading
  • Collaborative learning systems
  • Analyzing market data
  • Online appointment scheduling
  • Sharing profile images
  • Processing radiotherapy images

Federal Circuit Court of Appeals Judge S. Jay Plager wrote a separate opinion recently to describe the unpredictability that arises when “abstract ideas” are defined only by previous examples: