Last month the Supreme Court decided the case of Alice v. CLS Bank and wandered around once again in wonderland. Let me explain.  The U.S. Supreme Court, as judge made law, has grafted onto patent law the concepts that one cannot obtain a patent on a law of nature, a natural phenomenon, or an abstract idea. The problem from the perspective of a patent applicant is that the exclusions are relatively undefined. In particular, the definition, or lack thereof, for the term “abstract.”

Patent examiners routinely reject applications that seem to have a mathematical expression at their core, and during the past approximately 30 years attorneys at our firm have prosecuted sophisticated computer/software implemented inventions and have frequently had to overcome patent office rejections based upon the notion that software implemented inventions were “abstract.” Consequently, court decisions construing that term are of heightened interest to our clients.

There was hope that Alice would clarify the Court’s definition of abstract. Alice involved a computerized method for implementing the financial concept of an intermediate financial settlement. Without needing to go into the details of the financial concept, it is sufficient to note that the Court apparently takes a dim view of financial inventions. Alice was found to be no more than a fundamental economic practice and therefore “abstract” and unpatentable. Further, the Court concluded that the mere recitation of a computer cannot transform an abstract idea into a patent-eligible invention.

As for guidance, the Court said: “In any event, we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.” Apparently, like pornography, the Court knows something is abstract when they see it. The rest of us are left to wander around looking for a way out of the rabbit hole.

— Laurence Weinberger, Esq.