USPTO Issues Preliminary Alice Corp. Instructions and Invites Comments
Client Alert | 1 min read | 07.02.14
On June 25, 2014, the United States Patent and Trademark (USPTO) issued its Preliminary Alice Corp. Instructions on the application of the United States Supreme Court decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., No 13-298. The Preliminary Alice Corp. Instructions provide guidance to USPTO examiners when determining subject matter eligibility under 35 U.S.C. 101 of claims involving abstract ideas. The USPTO provided the following guidance:
- The USPTO will expand the two-part test set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 56 U.S. ___ (2012) to abstract ideas. Prior to Alice, the USPTO only applied the Mayo two-part test to claims involving laws of nature. See MPEP 2106.01.
- The USPTO will apply the Mayo two-part test across all categories of claims (e.g., product and process claims).
- Finally, the USPTO set forth the Mayo two-part test in detail, including several comments and examples.
The USPTO invited comments on the Preliminary Alice Corp. Instructions. Comments must be submitted by July 31, 2014, and instructions to provide comments is listed on the USPTO website.
Contacts
Insights
Client Alert | 13 min read | 10.30.25
Federal and State Regulators Target AI Chatbots and Intimate Imagery
In the first few years following the public launch of generative artificial intelligence (AI) in the autumn of 2022, litigation related to AI focused primarily on claims of copyright infringement. Suits revolved around allegations that the data on which AI models train, and/or the output they produce, infringe upon the intellectual property rights of others. (While some of these cases have settled or reached preliminary judgments, many remain ongoing.)
Client Alert | 3 min read | 10.30.25
Is Course Hero Heading to Summer School After Summary Judgment Loss?
Client Alert | 6 min read | 10.29.25
Enhancing UK cyber security resilience and leadership engagement
Client Alert | 9 min read | 10.28.25
Key Takeaways from a Consequential Month of Russia-Related Sanctions
