Alice Corp. v. CLS Bank

ALICE MAY VISIT THE JURY

The twin Supreme Court holdings in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014) and Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) establish a two-step test for patent subject matter eligibility under 35 U.S.C. § 101.  These steps are also incorporated in the U.S. Patent and Trademark Office (“USPTO”) Manual of Patent Examination Procedure (“MPEP), § 2106.  Recent Federal Circuit cases have made clear that there may be underlying issues of fact (precluding summary judgment and requiring a trial) in implementing the second step of the Alice/Mayo test, causing the USPTO to change its guidance to patent examiners.



THE PATENT BARGAIN AND THE CURSE OF RETROACTIVITY

Patents for inventions are issued by the federal government upon review and approval of an application to the U.S. Patent and Trademark Office (USPTO).  One of the requirements for the USPTO to issue a patent is that the applicant’s claimed invention be fully disclosed in the application and published in the patent. This is sometimes referred to as the “patent bargain.” This is at the opposite end of the spectrum from trade secrets law, under which a company can sue for misappropriation of a trade secret but only if it takes reasonable measures to maintain confidentiality of the trade secret.  See my prior blog post, “Remember to Keep Your Trade Secrets “Secret.”  Ominously, retroactive application of new patent rules may severely prejudice patent holders in abrogation of the patent bargain.