How the Supreme Court’s Decision in the Alice Case Changed Patent Law

An honors alumnus of the University of Miami with a BS in biology and chemistry, Angel Leiva received his JD from Ave Maria School of Law in Naples, Florida. Angel Leiva’s professional interests and areas of focus encompass real estate and patent law.

Patent law changed in 2014 when the Supreme Court of the United States held that abstract ideas are not eligible for patents. In practical terms, this has compromised software’s patentability, which is now determined via a two-step Alice or Mayo test.

The first question to be answered is whether the software or other invention is an abstract idea. If the answer is no, then it is eligible for a patent.

If the answer to the first question is “yes,” the second step of the test comes into play: Is there any element of the invention that, if patented, would amount to “sufficiently more” than a patent upon that portion that was deemed ineligible from the first step?

An important takeaway from this decision is to ensure that any technical issue arising from the inventive concept be discussed in the draft. Any issue that may be associated with the subject matter should be included in the draft and in the prosecution of the application. Its corresponding solution should also be included. This information will help the patent application to pass the second step, where an abstract idea transforms into patent-eligible subject matter.

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