A recent change to the Alice test occurred in the Berkheimer and Aatrix decisions of the Federal Circuit. At first glance, the conclusions drawn in these cases seem simple. In both cases, it is asserted that, although the determination of fitness under section 101 is a question of law, whether something is properly understood, routine and consensual at the second stage of the Alice test is a question of fact. In Berkheimer, the Federal Circuit dismissed a trial court`s summary judgment revoking the patent on the basis that determining the understanding and routine of the elements of the claim involved in the second stage an unresolved finding of fact that rendered an inappropriate summary judgment. Aatrix implied a similar rejection of a provision under Rule 12(b)(6). The process of applying the law to the facts of your case and advocating for a specific outcome requires more training than any guide can provide. This guide does not replace the expertise of a lawyer, especially when the results of legal research are presented to a judge in court. In the BSG case, the strongest position of the federal circuit to date was that the step-by-step analysis should ignore two elements of claim that implement the abstract idea. In that case, the tribunal found that the claims were aimed at the abstract idea of using historical usage information to guide a user when entering data into a database. Accordingly, the Court rejected the argument that the claims contained an inventive concept, even though, taken as a whole, they represented an unconventional solution offering advantages over prior art database solutions. This argument was rejected because the only unconventional aspect of the claim was the abstract idea of using historical usage information.

As the Court noted: Under the two-part Alice test, the Federal Circuit clarified that the machine or process test remains a “useful indication” in determining whether a claim contains an inventive concept after the second stage of the Alice framework. Ultramercial v. HULU, LLC. Therefore, if a method involves a particular machine (other than a general purpose computer) that plays an essential role in the claimed method, or if the method transforms a physical object, the machine or transformation test should be used to argue that the claimed method involves an inventive concept in accordance with the second step of the Alice test. Once this is done, a legal memorandum gives you a basic understanding of the law of your case at a glance. Every book on legal writing and analysis should include instructions for drafting a legal memorandum. Because there are so many different laws, laws are divided by subject in a collection of books (e.g., in Texas, Vernon`s Civil Laws). Statutes are usually very complex and may contain a number of references to other laws in other books. Be careful when reading a law. Articles of association may use language that seems common, but has a specific meaning in a legal context. To understand a law, be prepared: In MPEP 2106.05(h), the Patent Office states that mere scope limitations can be identified by the “failure to integrate” the scope “into the claim as a whole.” For example, the Patent Office considers the limitation of Flook`s scope to be “an accidental or symbolic addition to the claim.” On the other hand, the manner in which the rubber moulding process in the whole claim in Diamond v.

Diehr considered that this limitation was not a mere limitation of scope and that the claim was therefore patentable. This position means that one way to respond to an official act that identifies a claim element as a mere restriction of use is to compare the integration of your claim element with Diamond V. Diehr citing MPEP 2106.05(h). As explained above, teaching/rule on the elements of well-understood, common and conventional claims has become increasingly important in the evaluation of the second stage of Alice`s test. The fundamental lesson comes from the Mayo Supreme Court decision. Mayo`s data concerned correlations between certain metabolites in the blood and an appropriate dose of drug. This correlation was considered a natural phenomenon and, therefore, the claim was directed to a patentable concept at first. In the second stage of the test, the additional elements of the claim had to be taken into account.

These additional elements included measuring metabolite levels using a known method. The Supreme Court concluded that the use of standardized techniques to measure metabolite levels is nothing more than the addition of a conventional, routine and well-understood activity to the claim. As such, the additional claim element was not an inventive concept. An analyst or project manager should apply a monetary measure to all items on the cost-benefit list, taking care not to underestimate costs or overestimate benefits. A conservative approach, with a conscious effort to avoid subjective trends in the calculation of estimates, is best suited to assign value to costs and benefits for a cost-benefit analysis. Although the second step of the Alice test requires an assessment of whether the elements of the claim are known or current, the Patent Office considered that no prior art search should be carried out as part of this analysis. Instead, “examiners should rely on what the courts have accepted or that professionals would recognize as elements that are well-understood, routine, and conventional activities in the relevant field.” MPEP 2106.05(e). After reading the rest of this section, you will better understand these two types of legal issues. However, it should be clear from the above examples that the wording and focus of the questions differ considerably. RAIC is an acronym for every step of the process. It may refer to: Often, one of the most difficult parts of legal research can be understanding words commonly used in legal writing.

The glossary of legal terms can inform your legal research. The conclusion is the result of the application of the law to the facts used to resolve the question of law. In a judicial opinion, the conclusion is the decision of the court. In analyzing whether the elements of the claim contain an inventive concept in the second step, the Supreme Court asked us to examine each element of the claim individually and “as an ordered combination” of elements. Alice. This is a very important instruction, as noted by Bascom`s Federal Circuit, that “an inventive concept can be found in the unconventional and non-generic arrangement of known conventional parts.” Therefore, under Bascom, we can look for claim elements that define an unconventional arrangement, even if the individual claim elements are well understood, common, and conventional. Similarly, the Federal Circuit in Rapid Litigation Mgmt. pointed out that the second step can find an inventive concept in a new combination of steps, “although all components of the combination were well known and commonly used prior to the combination.” There are many legal research methods that can lead to good results.

The key to good research is to be patient, careful and thorough while you read. For other legal research methods, you can read other research guides published by the Texas State Law Library. Currently, the courts are not consistent in their analysis of this issue. In Bascom, the claims related to the abstract idea of filtering content on the Internet. Although the claims did not pass the first step of the Alice test, they were found patentable after the second step because they contained a unique and unconventional method of performing content filters. It is by no means clear that the Court ignored the elements of the claim relating to the abstract idea of content filtering when it held that the ordered combination of the elements of the claim constituted an inventive concept. Finally, the inventive concept in Bascom, found in the second stage of Alice`s test, was a specific technique for realizing the same abstract idea cited against the claim at the first stage. It is possible that this case means that the claim elements that reveal unconventional implementation details can be considered for the inventive concept after the second stage of Alice`s test, even if the same claim elements are part of the elements that present the abstract idea.