Alice-Mayo blocks cybersecurity patent eligibility now

As an initial matter, this paper focuses on software cybertechnologies. This distinction is crucial to keep in mind as the case law focuses on software implementation.12 Cybertechnology patent applications have faced increased scrutiny since the U.S. Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l.13 In Alice, the Court stated that an "abstract idea" is not patent eligible merely by being implemented on a computer. Unfortunately, the Court did not define "abstract idea." 14 Before and since the Alice decision, there have been several other cases that illuminate the Court's directionality regarding software patents.

In Alice, the technology was a management system for financial obligations implemented on a computer. To deduce whether this technology was patentable, the Court implemented a two-step inquiry process: (1) Does the subject matter of the patent fall into patent ineligible criteria (law of nature, abstract idea, and natural phenomenon); and (2) if so, is there an inventive concept sufficient to ensure that the patent, in practice, amounts to significantly more than a patent upon a patent-ineligible concept?16

The "two-step" test has become the threshold inquiry in many software-related patents and the barrier to many cyber technology patents. The Federal Circuit has incorporated this test in software patent cases since Alice. A few of the crucial cases are described, summarily, below.

In Enfish, LLC v. Microsoft Corp., the Federal Circuit deemed the invention to be patent eligible after putting the technology through the rigors of the two-step inquiry. 17 The invention was a self-referential database. The court justified its decision by saying that not all computer improvements are abstract ideas; the analysis must center around whether the focus of the claims is on the specific asserted improvement in computer capabilities or on a process that qualifies as an "abstract idea" for which computers are merely a tool. 19

In McRO, Inc. v. Bandai Namco Games America Inc., the Federal Circuit again decided that the patent application was patent eligible.20 The invention was a method for synchronizing speech and facial expression of 3D animal characters through a computer program.21 The court justified its decision by saying that this invention was directed towards an improvement, not the entire abstract idea. 22

Although Enfish and McRO are examples where the invention was patent eligible, a significant amount of applications are rejected or face a long prosecution timeline. 23 In either case, the current system has disincentivized innovation in the area. As an anecdote, in the e-commerce and business method patent group (group #3600), the rejection rate has doubled from pre- to post-Alice.24