USPTO Issues “Preliminary Examination Instructions for Determining Subject Matter Eligibility in view of Alice Corp. v. CLS Bank

In a June 25 memo, the USPTO issued its preliminary guidance to examiners regarding the “abstract idea” exception to patent-eligibility under 35 U.S.C. 101. The memo (1) replaces the USPTO’s prior guidance based on Bilski, (2) acknowledges that the “abstract idea” exception applies to all types of claims, and (3) lays out a two-step analysis for determining whether a claim is directed to a patent-ineligible abstract idea consistent with the Supreme Court’s recent decision in Alice Corp v. CLS Bank. Oliff has issued a Special Report on the CLS Bank decision, which also addresses the USPTO’s preliminary guidance.