Client Alerts & Newsletters

USPTO Issues Preliminary Alice Corp. Instructions and Invites Comments


On June 25, 2014, the United States Patent and Trademark (USPTO) issued its Preliminary Alice Corp. Instructions on the application of the United States Supreme Court decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., No 13-298. The Preliminary Alice Corp. Instructions provide guidance to USPTO examiners when determining subject matter eligibility under 35 U.S.C. 101 of claims involving abstract ideas. The USPTO provided the following guidance:

  • The USPTO will expand the two-part test set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 56 U.S. ___ (2012) to abstract ideas. Prior to Alice, the USPTO only applied the Mayo two-part test to claims involving laws of nature. See MPEP 2106.01.
  • The USPTO will apply the Mayo two-part test across all categories of claims (e.g., product and process claims).
  • Finally, the USPTO set forth the Mayo two-part test in detail, including several comments and examples.

The USPTO invited comments on the Preliminary Alice Corp. Instructions. Comments must be submitted by July 31, 2014, and instructions to provide comments is listed on the USPTO website.

For more information, please contact the professional(s) listed below, or your regular Crowell & Moring contact.

Terry Rea
Partner – Washington, D.C.
Phone: +1 202.624.2620

Jeffrey D. Sanok
Partner – Washington, D.C.
Phone: +1 202.624.2995

Ali Tehrani
Counsel – Washington, D.C.
Phone: +1 202.624.2797

Crowell & Moring LLP is an international law firm with offices in the United States, Europe, MENA, and Asia that represents clients in litigation and arbitration, regulatory and policy, and transactional and corporate matters. The firm is internationally recognized for its representation of Fortune 500 companies in high-stakes litigation and government-facing matters, as well as its ongoing commitment to pro bono service and diversity, equity, and inclusion.

View Desktop Site | Mobile Sitemap |

Contact | Subscribe | Terms of Use | Privacy Statement | Alumni

© Crowell & Moring LLP 2021
Attorney advertising - prior results do not guarantee a similar outcome.