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Volume: 35 | Article ID: art00038_1
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New Guidelines Issued by the U.S. Patent & Trademark Office on Patenting Computer-Implemented Inventions That Broaden Patent Eligibility by Restricting Abstract Idea Determinations
  DOI :  10.2352/ISSN.2169-4451.2019.35.187  Published OnlineSeptember 2019
Abstract

Since the U. S. Supreme Court decision of Alice Corp. v. CLS Bank in 2014, many U. S. patents and patent applications covering computer-implemented inventions (CIIs), including software inventions, have been invalidated or rejected as being directed to "abstract ideas" which are not eligible for patenting. This decision has resulted in a plethora of issued patents in all areas of computer technology being invalidated as abstract ideas by the federal courts and by the U.S. Patent & Trademark Office (PTO) while providing little or confusing guidance to Applicants on how to avoid patent ineligible abstract idea determinations. As a result, the PTO has recently issued new examination guidelines to assist Applicants in preparing patent applications to avoid such determinations. Furthermore, the U.S. Senate is currently promulgating new patent statute legislation to clarify the requirements of patentable subject matter to ensure the CIIs are not being denied the patent protection that they deserve. This paper will discuss the new guidelines and provide take-aways for Applicants considering patent protection on their CIIs.<br/> Scientists and engineers in advanced technology fields are frequently involved in the patenting process and are generally aware of the basic threshold standards of novelty and nonobviousness for patenting an invention. [1]. There is, however, an equally fundamental requirement that rarely arose in patenting high tech inventions, but which has now taken center stage, at least in inventions that include software. This is the requirement that the invention be directed to patent eligible-subject matter. The Patent Statute 35 U. S. C. §101 states:<br/> Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.<br/> While the Patent Statute states only that a patent may be obtained for "any new and useful process, machine, manufacture or composition of matter," the U.S. Supreme Court in Gottschalk v. Benson [2] interpreted those terms such that " (1) laws of nature, (2) natural phenomena and (3) abstract ideas" are excluded from patent eligible subject matter. The last of these three areas, the prohibition against patenting abstract ideas, which came to include mathematical formulae in Gottschalk, is the basis for the farranging 2014 Supreme Court ruling Alice Corp. v. CLS Bank. That ruling, overnight, effectively invalidated thousands of patents and has already been the basis for a large number of court cases and motions to invalidate previously-granted patents; and nowhere in the Alice opinion is the term "abstract idea" explicitly defined but only "hinted at" using phrases such as "the basic tools of scientific and technological work" or "tying up the future use of these building blocks of human ingenuity". [3]. Meanwhile, patent practitioners have seen rejections of applications involving software skyrocket with the "abstract idea" concept applied even to inventions that do not mention software.

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  Cite this article 

Scott M. Slomowitz, Michael J. Cornelison, Caesar Rivise, "New Guidelines Issued by the U.S. Patent & Trademark Office on Patenting Computer-Implemented Inventions That Broaden Patent Eligibility by Restricting Abstract Idea Determinationsin Proc. IS&T Printing for Fabrication: Int'l Conf. on Digital Printing Technologies (NIP35),  2019,  pp 187 - 191,  https://doi.org/10.2352/ISSN.2169-4451.2019.35.187

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