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?