The Possible Impact of Alice v. CLS Bank on Chemical Inventions

Below are excerpts of slides from my presentation at an American Chemical Society meeting where I mention the possible impact of the recent Alice v. CLS Bank Supreme Court decision on chemical inventions.

1. What Can Be Patented?

  • 35 U.S.C. 101 – Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,  may obtain a patent therefore, subject to the conditions and requirements of this title.
  • Inventions must be useful, novel, and non-obvious

2. Broad Types of Chemical Innovation

  • Compounds
  • Syntheses/manufacture
  • Modeling
  • Analytical instruments
  • Analytical processes
  • Diagnostic kits/diagnostic reagents
  • Microorganisms, virology, genetics
  • Vaccines
  • Plants
  • Medical devices

3. Alice v. CLS Bank

  • Invalidated claims generally directed to a computerized method for performing a “form of escrow” designed to mitigate the risk that only one party to a financial transaction will perform its contractual obligations at settlement.
  • Invalidated claims recite computer-implemented methods of settling financial transactions, as well as computer-readable media capable of storing, and generic computer systems capable of running, programming instructions for performing the claimed method.
  • Claims directed to an “abstract” idea or a “generic computer” implementation of an abstract idea are ineligible for patent protection
    Imposed significant additional requirements

4. What is “Software?”

Generally two main aspects for any type of software:

  • Algorithms, methods, and other general concepts that describe, at a high level, how the software operates; and
  • Actual computer code for implementing these concepts.

Patents – generally seek to protect the former

5. Software-Based Patents After Alice v. CLS?

USPTO Examination (still developing)

  • Is the claim directed to an “abstract” idea?
  • If so, are there other claim features that show a patent-eligible application of the abstract idea, e.g., more than a mere instruction to apply the abstract idea?

6. Potential Impact to Chemical Patent

  • No impact
  • Narrow the scope of claims
  • Completely ineligible

7. What Chemical Innovations Involve Software?

  • Compounds
  • Syntheses/manufacture
  • Modeling
  • Analytical instruments
  • Analytical processes
  • Diagnostic kits/diagnostic reagents
  • Microorganisms, virology, genetics
  • Vaccines
  • Plants
  • Medical devices

 

8. Highly Speculative Risk Continuum of Impact

Compounds < Instruments < Informatics

Presentation Slides
Is ‘Alice’ in the Chemical Wonderland?

 

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