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Business Methods Patent Eligibility: An Examiner’s View and a Plea for Certainty

Bradley, Joshua D.; (2019) Business Methods Patent Eligibility: An Examiner’s View and a Plea for Certainty. Masters thesis (LL.M), University of Turin. Green open access

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Abstract

This paper will explore the difficulty a patent examiner faces when applying the Supreme Court’s two-step test put forth in the Alice Corp. v. CLS Bank Int’l decision, i.e. whether there is an abstract idea, and if so, whether the claims contain something that amounts to “significantly more”. The case law that has led to the two-step framework will be briefly discussed, as will the USPTO’s 35 U.S.C. § 101 guidance. Real-world examples and the outcomes reached, if any, will be discussed with particular attention to how an examiner determines whether an abstract idea is recited, and the thought processes involved, and whether the abstract idea is overcome by recitation of something in the claims that amounts to “significantly more”. As hopefully will be clear after review of the examples, and given the complexity of the issue and the amount of time and effort spent by the examiner on these § 101 issues, the author will contend that § 101 needs to be amended to afford more particularity and certainty to applicants, examiners, courts, and the public at large. Lastly, potential proposals of how § 101 could be amended to afford more certainty and predictability will be briefly presented.

Type: Thesis (Masters)
Qualification: LL.M
Title: Business Methods Patent Eligibility: An Examiner’s View and a Plea for Certainty
Event: University of Turin
Open access status: An open access version is available from UCL Discovery
DOI: 10.2139/ssrn.3682467
Publisher version: https://ssrn.com/abstract=3682467
Language: English
Keywords: patent, patent eligibility, business methods
UCL classification: UCL
UCL > Provost and Vice Provost Offices > UCL SLASH
UCL > Provost and Vice Provost Offices > UCL SLASH > Faculty of Laws
URI: https://discovery.ucl.ac.uk/id/eprint/10139227
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