Federal Circuit


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.