Description

The Supreme Court's Alice Corp. v. CLS Bank Int’l decision in 2014 provided a two-part test to determine patentable subject matter under 35 U.S.C. § 101. First, the court determines whether the claim is directed to an abstract idea. Unfortunately, the Supreme Court did not provide much, if any, guidance on how such a determination is made other than to say:

[W]e need not labor to delimit the precise contours of the "abstract ideas" category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept … at issue here.

Second, if the claim is directed to an abstract idea, the court examines the claim to determine whether "it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible invention." The Supreme Court held that "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." As a result, if a claim is directed to an abstract idea, it is very close to being found ineligible and cannot be saved by mere generic computer recitations, which poses a problem for many software patents. Therefore, it is critical for patent counsel to understand what is an abstract idea and how is it determined.

The Federal Circuit has provided significant guidance on Alice's step one. For example, in Enfish L.L.C. v. Microsoft Corp. (Fed. Cir. 2016), the court found that a claim was not directed to an abstract idea because the "focus of the claims is on the specific asserted improvement in computer capabilities… ." And, most recently, in PowerBlock Holdings Inc. v. iFit Inc. (Fed. Cir. Aug. 11, 2025), the court held that it is improper to consider whether claim limitations are old, new, or obvious as part of the Alice step-one analysis.

Listen as our panel of experienced patent attorneys examines the issue of abstractness and patent eligibility. The panel will offer best practices for applying recent court and USPTO guidance both to assist counsel with defending software patents from § 101 challenges and to draft software patent applications to minimize the risk of a § 101 challenge.