With the rise in popularity of post-grant challenges, the ability to survive such challenges has become critical for patent owners. While not an issue in inter partes reviews (IPRs), a patent can be challenged on § 101 grounds in post-grant reviews (PGRs) and covered business method reviews (CBMs). Since Alice, many CBMs have been instituted on § 101 grounds. There remains some uncertainty as to the limits of patent eligibly, particularly for computer-related claims. As post-Alice cases work their way through the courts, the line between patent-ineligible ideas and patent-eligible applications of those ideas will likely be clarified. In an attempt to provide some immediate clarity to examiners and applicants, last week the USPTO released a set of example claims to be used in conjunction with its eligibility guidance documentation to help illustrate examples of patent-eligible and patent-ineligible claims directed to computer-related inventions. These examples provide a window into the USPTO’s view of the state of the law in the wake of Alice and its progeny. What remains to be seen is how these examples will affect practice before the USPTO, both before and after issuance.

What lessons can be taken from these examples? For one thing, all of the examples analyze the specification and the underlying subject matter – not just the claims. This seems to show the USPTO is taking to heart the Supreme Court’s mandate in the Mayo and Alice decisions against making patent eligibility a “draftsman’s art.” While the claims are at the heart of the two-step eligibility analysis, the claims have to be read in context. There is no silver bullet – no magic words can be added to the claims to make all computer-related inventions patent eligibility.

What else can be learned? The USPTO may have an optimistic view of what remains patent-eligible today. The “digital image processing” example is modeled after Research Corp. v. Microsoft and the “global positioning system” example is modeled after SiRF Technology v. ITC – both decided by the Federal Circuit in 2010. Since Alice, however, it seems less-than-certain that these claims would still be found to be patent eligible. It was after these decisions that the Federal Circuit decided in Ultramercial I and Ultramercial II that claims satisfied § 101 only to ultimately determine that the claims fail § 101 after the Supreme Court’s further guidance in Alice. While these examples will be useful tools to address a nuanced area of patent law with examiners, only time will tell if they accurately reflect the evolution of patent-eligible subject matter.

So what bearing will these examples have on post-grant practice?  My prediction is that patent owners and challengers would have little success analogizing claims to those at issue in these examples to survive or succeed in a challenge before the PTAB.  As shown in the January 20, 2015 final written decision in Dell v. Disposition Services (CBM2013-40) – and many other PTAB decisions – the PTAB will thoughtfully perform the two-step Alice/Mayo analysis applying the precedent cited in the parties’ briefs and addressing the parties arguments.  It seems unlikely that the PTAB would find arguments based on the USPTO’s conclusions regarding claims not-at-issue to be particularly persuasive.  The value from these examples is in the thoughtful two-step Alice/Mayo analyses the USPTO performed.  Like in these examples, patent challengers and owners alike need to carefully consider how to frame the steps of the analysis and logically articulate their positions in context of the evolving case law.