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USPTO Issues Preliminary Alice Corp. Instructions and Invites Comments


On June 25, 2014, the United States Patent and Trademark (USPTO) issued its Preliminary Alice Corp. Instructions on the application of the United States Supreme Court decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., No 13-298. The Preliminary Alice Corp. Instructions provide guidance to USPTO examiners when determining subject matter eligibility under 35 U.S.C. 101 of claims involving abstract ideas. The USPTO provided the following guidance:

  • The USPTO will expand the two-part test set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 56 U.S. ___ (2012) to abstract ideas. Prior to Alice, the USPTO only applied the Mayo two-part test to claims involving laws of nature. See MPEP 2106.01.
  • The USPTO will apply the Mayo two-part test across all categories of claims (e.g., product and process claims).
  • Finally, the USPTO set forth the Mayo two-part test in detail, including several comments and examples.

The USPTO invited comments on the Preliminary Alice Corp. Instructions. Comments must be submitted by July 31, 2014, and instructions to provide comments is listed on the USPTO website.

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