在2014年6月19日，美國最高法院一致通過Alice Corp. Pty. Ltd. v CLS Bank International et al, 573 U.S.（2014）一案的判決，由於這個案子的專利申請範圍包含了抽象概念（在本案裡，是一項與降低金融交易中之結算風險有關的技術），所以此一專利並不屬於專利適格標的。按照美國最高法院在Collaborative Services v Prometheus (Mayo) 一案的判決中，對於抽象概念是否為專利適格或者是不符合35U.S.C.101之規定的測試方法來看，這樣的結果完全是可被預見的。值得注意的是，在Alice一案的判決裡，這個抽象概念係被請求項劃定為電腦軟體的一部分，但想要具備專利適格性，就不能只是電腦軟體中的一個抽象概念而已。
很多文章都已經討論過這個判決將會如何影響35 USC§101所規範之專利適格性認定，而這個判決也因為只點出僅只是應用了電腦系統仍然是不夠的，卻未詳細說明在抽象概念以外所必須附加讀技術特徵是什麼，而廣受批評。筆者認為，這個判決結果似乎會使得美國的體系變得更貼近於歐洲專利局的體系，也就是對於電腦軟體發明應衡量其在相同領域裡的貢獻來認定其枝創新程度（應依據每個技術特徵來認定，EPO T 1173/97, IBM II），以及是否具備可專利性。當然，在Alice一案中的技術係屬於降低結算風險的方法，其並不落在EPC所允許的技術領域之內。
Directions to take in light of Alice Stefano John NAIP Education & Training Group / European Patent Attorney
On 19 June 2014, the US Supreme Court unanimously held in Alice Corp. Pty. Ltd. v CLS Bank International et al, 573 U.S. (2014) that claims containing abstract ideas (in this case a technique of mitigating“settlement risk” in financial transactions) were not patent eligible. This was entirely predictable, particularly in light of the test set out by the US Supreme Court in Mayo Collaborative Services v Prometheus (Mayo) as to whether abstract ideas are patent eligible or not under section 101. The interest that has arisen in the Alice decision comes from the fact that the abstract idea was claimed as part of a computer-implemented invention, and to be patent eligible it required something more than an abstract idea being implemented in a computer system.
A lot of articles have been written already about this decision and how it affects patent eligibility under 35 USC §101, and the decision has been criticised for not spelling out what the additional features required beyond the abstract idea are, only that mere implementation into a generic computer system is not enough. I would argue that this decision seems to be moving the US system closer to the EPC system, whereby a computer implemented invention is measured for its contribution to the art to decide where the innovation lies (technical character as per decision T 1173/97, IBM II) and if it is patentable or not. Of course the art in Alice was a method of mitigating settlement risks and this is not a technological field according to the EPC.
Returning to the present situation in the US, it has been noticed that the USPTO is sending out more rejections for computer implemented methods under 35 USC §101, wherein the objection basically boils down to the Examiner claiming the method is an abstract idea merely implemented on a generic computer system. How can one overcome such rejections?
First step is to check that the same claims are being rejected to under novelty (§102) and/or obviousness (§103). If they are not rejected under either, it seems highly unlikely that the Examiner is able to claim that there is no additional subject matter beyond the abstract ideas which is not generic (generic cannot be novel and non-obvious by definition!).
Second step is to argue against the novelty and obviousness rejections. In doing this, it is important to decipher what is the abstract idea being claimed by the Examiner as a §101 rejection is. Alice has not given a clear definition, but from an excerpt one can see what is not an abstract idea:
The method claims do not, for example, purport to improve the functioning of the computer itself…. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to "nothing significantly more" than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer. Under our precedents, that is not "enough" to transform an abstract idea into a patent-eligible invention
As we know from Alice, business methods do not count as technology or technical field. From Flook and Benson, mathematical formulae and algorithms also do not count. However better computer functioning is. Again this seems to be moving the US perspective closer to the European one.
It is then important to prepare a response which emphasises the innovative qualities of the other parts of the claim which are not abstract ideas and clearly spelling out all technological innovations required by the claims. It may also be useful to dispute any assertion made by the Examiner that the computer system is a generic computer system by citing any examples which are known in the art and not able to perform the method.
A further lesson to take from Alice is to pay particular attention to in drafting computer implemented method patents by balancing the need for wider scope of the patent claim against moving too close to an abstract idea to be implemented in a generic computer. For example, instead of mentioning that any computer may implement the invention, just avoid citing the generic phrase or restrict it to a better defined and more applicable definition of computer system. It may also be useful to continually emphasize throughout the specification the technological field to which the invention is applied and what improvements can be achieved by this method.
Author:
Stefano John, European Patent Attorney
Experiences：
European Patent Attorney, Bryers
Trainee European Patent Attorney, Bugnion SpA
Trainee European Patent Attorney, Notabartolo & Gervasi
Internship, EPO
