Intertwined with the long ambiguity of the scope of patent eligible software has been the difficulty in defining what are patent ineligible “abstract ideas”. Recall 35 U.S.C. Section 101 states that all things invented by man are patentable subject matter except laws of nature, natural phenomena or abstract ideas. These three items are referred to below as “exceptions” to patent eligibility.
Recall further patentable subject matter must also be novel (Section 102) or non-obvious (Section 103). The application must also adequate describe or teach the invention, e.g., teach enablement to a person skilled in the art (Section 112).
In January of 2019, the USPTO issued revised guidelines to the approximately 8,500 patent examiners. The guidelines clarify how patentability of abstract ideas is to be determined. (It also serves as affirmation of my belief that the prior chain of cases was tremendously confusing and decisions of patentability were inconsistent and unpredictable.)
Based upon the Supreme Court cases of Mayo v. Prometheus and Alice v. CLS Bank, the courts and USPTO established the “Mayo/Alice” test. The multipart test required determining whether the claims of the patent or patent application incorporated or recited an abstract idea. If yes, the test then required determining whether the claims also embraced something “substantially more” than merely the abstract idea, e.g., that the claim utilized the abstract idea in a practical application. In the absence of this “substantially more” component, claims embracing an abstract idea were not patent eligible.
The courts have never defined what constitutes an “abstract idea”.
The new USPTO guidelines attempt to define or clarify what constitutes an abstract idea. This is accomplished by grouping examples into three categories, i.e., mathematical concepts, certain methods of organizing human activity, and mental processes.
Mathematical concepts: includes mathematical relationships, formulas, equations or calculations.
Certain methods of organizing human activity: includes fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including contracts, advertising, marketing or sales activities or behaviors or business relations); managing personal behavior or relationships or interactions (including social activities, teaching, and following rules or instructions).
Mental processes: including observation, evaluation, judgment or opinion.
Under the revised guidelines, the first step is for the examiner to determine if a claim of the application recites an abstract idea (as “defined” above), law of nature (e.g., one of Newton’s laws) or natural phenomena (e.g., water and oil don’t mix). If the answer to the examiner’s determination is no, then the subject is patent eligible and the Section 101 inquiry ends. If yes, the examiner must continue to a second step wherein the claim/invention is evaluated to assess whether “the claim recites additional elements that integrate the exception into a practical application of that exception.”
The guideline provides examples of this “integration into a practical application” of the exception.
Examples: an improvement in the functioning of a computer or other technology; effecting a particular treatment or prophylaxis for a disease or medical condition; implementation of the exception with a particular machine or manufacture: or implementation with transformation or reduction of an article to a different state or thing.
Further, even in the absence of “integration into a practical application”, the claim/invention may still be patent eligible if the claim/invention recites elements that are significantly more than the recited exception to patentability. This “significantly more” is referenced as an “inventive concept”.
Examples of this “significantly more” include claim elements of a specific limitation or combination of limitations that are not “well understood, routine, (or) conventional activity in the field”.
The initial answer to the question of whether software or a business method is patentable may still be “It depends”, but perhaps the analytical steps have been clarified sufficiently clarified that the subsequent/follow-on answer will be more consistently accurate.
Copyright David McEwing, 2019