In its June 19 decision, the Supreme Court held claims to a computerised scheme for mitigating settlement risk patent-ineligible because they are drawn to an abstract idea.
In a blog post, Peggy Focarino (right), USPTO commissioner for patents, identified three steps the USPTO is taking as a result.
First, it issued preliminary examination instructions on June 25 to assist examiners when evaluating subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas, in view of Alice.
Second, the USPTO has taken steps to avoid granting patents on those applications containing patent ineligible claims in view of Alice that were indicated as allowable prior to Alice but that have not yet issued as patents.
“To this end, our primary examiners and supervisory patent examiners (SPEs) promptly reviewed the small group of such applications that were most likely to be affected by the Alice Corp. ruling,” explained Focarino.
“We withdrew notice of allowances for some of these applications due to the presence of at least one claim having an abstract idea and no more than a generic computer to perform generic computer functions. After withdrawal, the applications were returned to the originally assigned examiner for further prosecution. Over the past several days, our examiners have proactively notified those applicants whose applications were withdrawn.”
Applicants who had already paid the issue fee for applications withdrawn from allowance may request a refund, a credit to a deposit account, or reapplication of the fee if the applications return to allowed status.
Focarino added that this action was “closely-tailored”, and the USPTO does not anticipate further review of any applications indicated as allowable under this process because examiners are now following the Alice preliminary instructions during examination.
Third, on June 30 a Federal Register Notice was published to solicit written comments from the public on the preliminary examination instructions. The period for submitting those comments ended July 31 2014. “All input will be carefully considered as we work to develop further examination guidance, which we anticipate issuing this coming fall,” said Focarino.
