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USPTO Examples Show What Does – And What Doesn’t – Pass Muster Under Alice

January 27, 2015

​Fenwick & West patent partner Robert Sachs was spotlighted in a Law360 article about the U.S. Patent and Trademark Office’s release of a list of examples of computer-related inventions that theoretically could – and couldn’t – survive the U.S. Supreme Court's Alice decision, which severely restricted the eligibility of patents involving abstract ideas.

The USPTO document cited four inventions that the office says are patent-worthy under Alice and four that don’t pass muster, mostly drawn from recent Federal Circuit decisions.

But Sachs noted that the document does not provide an adequate explanation of exactly why the ineligible examples fall short, and more importantly, does not expound on what it would take to make these inventions patent eligible under Alice.

"There's no explanation, just a naked assertion that those things are not sufficient,” Sachs told Law360. “The court glossed it, so the patent office glossed it. They can't go beyond what the court said."

And as a result, Sachs said that the documents "don't advance the game very far.”

Without a more thorough explanation of the ineligible patents’ failings and how to remedy them, the document remains of dubious value in helping to draft future patent claims, Sachs explained.

"There's no high-level theory or overarching analysis," he concluded. “That's what's missing."

The full article is available through the Law360 website (subscription required).​​