Alice test
The Alice test is a test for patent eligibility established by the U.S. Supreme Court, rather than Congress.
The Alice test is as follows:
| “ | The Supreme Court in Alice articulated a two-part test to determine ineligible patent subject matter. See Alice, 573 U.S. at 217, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 75-81). Under this two-part Alice test, a court must (1) "determine whether the claims at issue are directed to one of those patent-ineligible concepts," and (2) if so, "consider the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Id. (citing Mayo, 566 U.S. at 75-81). The second step has been characterized as "a search for an 'inventive concept.'" Id. (citing Mayo, 566 U.S. at 71-74); see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016).
The category of "abstract ideas" as one of the "patent-ineligible concepts" under step one of the Alice test "embodies 'the longstanding rule that [a]n idea of itself is not patentable.'" See Alice, 573 U.S. at 218, 134 S. Ct. at 2355 (citing Gottschalk v. Benson, 409 U.S. 63, 67, 93 S. Ct. 253, 34 L. Ed. 2d 273 (1972) (internal quotation omitted) (alteration in original)). The Supreme Court and other courts have held various abstract or conceptual subject matters to be patent ineligible abstract ideas under 35 U.S.C. § 101. See, e.g., Alice, 573 U.S. at 219, 134 S. Ct. at 2355-57 (finding as patent ineligible "a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk," which embodied the abstract idea of intermediated settlement); Benson, 409 U.S. at 71-72 (finding as patent ineligible an algorithm for converting binary-coded decimal numerals into pure binary form, as it was "in practical effect . . . a patent on the algorithm itself."); Parker v. Flook, 437 U.S. 584, 594-95, 98 S. Ct. 2522, 57 L. Ed. 2d 451 (1978) (finding as patent ineligible a mathematical formula for computing "alarm limits" in a catalytic conversion process). Nonetheless, specific improvements in technology, method, or material that make more useful concepts, ideas, or materials are patent eligible. See Rapid Litigation Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1048-49 (Fed. Cir. 2016) (finding that a "new and useful laboratory technique for preserving [a type of liver cell]" was patent eligible subject matter); Hitkansut LLC v. United States, 130 Fed. Cl. 353, 380 (2017) (finding as patent eligible a "new and more efficient method for treating metal parts to change their physical properties"), aff'd, 721 Fed. Appx. 992 (Fed. Cir. 2018). At bottom, the point is to "distinguish between patents that claim the 'buildin[g] block[s]' of human ingenuity and those that integrate the building blocks into something more." Alice, 573 U.S. at 217, 134 S. Ct. at 2354 (citing Mayo, 566 U.S. at 88-89) (internal quotation omitted) (alteration in original). |
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3rd Eye Surveillance, LLC v. United States, 140 Fed. Cl. 39, 51-52 (2018).
