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Refinements of the ‘ALICE’ Test for Patent Eligibility in the US

Patent eligibility is a key issue which can make – or break – a patent. We review the latest decision ‘Visual Memory’ from the USA and assess the potential impact in Europe.

The Alice decision of the US Supreme Court in 2014 set a new test for determining ‘patent eligibility’ – whether or not a particular innovation or improvement is appropriate to be covered by the patent system. This key decision changed the landscape for patent prosecution and patent litigation in America, particularly for software inventions but affecting other fields too. Hence, we are closely following the subsequent developments in US caselaw and practice.

Visual Memory from the Federal Circuit in August 2017 adds to some 90-plus court decisions which have considered, applied and refined the test for patent eligibility under US law following Alice.

The decision in Visual Memory is notable for two key reasons. Firstly, as something of a rarity, the Federal Circuit reversed the negative decision of the District Court. Secondly, the three judges making this decision were themselves divided 2:1 with the majority in favour of patent eligibility and the dissenting opinion still rejecting the invention as being simply an ‘abstract idea’.

The dissenting opinion in Visual Memory has attracted particular interest for patent prosecutors dealing with the USPTO, and litigators considering patents for the US courts. In particular, Visual Memory has highlighted the need for a thorough description of the invention in technical terms, especially for the key features of the invention.

From our European viewpoint, it seems that US practice following Alice is moving toward the position that has been long-established at the European Patent Office. In particular, US practice post-Alice now highlights the need to prepare patent specifications with sufficient detail of the technical working of the invention, including identifying the relevant technical advantages.

As US drafting practice moves more towards the European viewpoint, it should be easier, and cheaper, to get patents granted at the European Patent Office, and likewise to maintain validity of those patents when challenged in the courts in Europe.

To find out more about Visual Memory and its potential impact in Europe, click here.

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