USPTO Explains Interim Policy After CLS Bank

Last week, Acting Deputy Director of the USPTO Michelle K. Lee appeared before the House Judiciary Committee. While largely an uneventful visit to report on agency progress, a few interesting questions were posed with regard to treatment of current patent applications under Alice Corp. v. CLS Bank. At the hearing, Director Lee was asked about reports that the USPTO was pulling allowances for a reassessment of claims under, CLS. (Back on June 25th the USPTO issued interim examination guidelines for assessing the statutory nature of patent claims in view of the landmark decision.) To this question Director Lee explained:

We wouldn’t want to issue patents that are not in compliance with the current case law,. . .What we have in our pipeline is a number of cases that may be or are affected by the changes in law by the Alice-CLS case. . .  ..In that instance, before a patent number has been provided, it’s incumbent on us, before the patent leaves the office, to apply the current law.

Perhaps spooking stakeholders with these statements, this past Monday, the PTO issued a further clarification, explaining:

. . .the USPTO has applications that were indicated as allowable prior to Alice Corp., but that have not yet issued as patents. Given our duty to issue patents in compliance with existing case law, we have taken steps to avoid granting patents on those applications containing patent ineligible claims in view of Alice Corp. 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.

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 Over the past several days, our examiners have proactively notified those applicants whose applications were withdrawn. (Applicants who had already paid the issue fee for applications withdrawn from allowance may request a refund, a credit to a deposit account, or reapplication of the fee if the applications return to allowed status.)

This limited action was closely-tailored and taken specifically in reaction to the Alice Corp. decision. We do not anticipate further review of any applications indicated as allowable under this process, as examiners are currently following the Alice Corp. preliminary instructions during examination (i.e., prior to allowance).

Third, as we continue to study Alice Corp. in the context of existing and developing precedent, public feedback will assist us in formulating further guidance for our examiners. On June 30th, 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. We appreciate the comments we have received to date. All input will be carefully considered as we work to develop further examination guidance, which we anticipate issuing this coming fall.