Post by Luke T. Mohrhauser
A threshold requirement for obtaining a patent is that the subject matter must meet eligibility requirements. Recent changes from the Supreme Court have impacted the types of patent eligible inventions as they relate to abstract ideas. In response to these changes the USPTO recently issued a set of Examples of claims including abstract ideas that both satisfy and do not satisfy the recently issued 2014 Interim Eligibility Guidance.
For reference, the Guidance provides a two-step approach for determining subject matter eligibility, where Step 1 determines whether the claim is directed to a process, machine, manufacture, or composition of matter. Step 2 is a two-part analysis where an examiner first determines whether the claim is directed to a law of nature, a natural phenomenon, or an abstract idea (judicial exceptions). If no, the claim is eligible and examination should continue for patentability. If yes, the analysis proceeds to Step 2B to analyze whether the claim as a whole amounts to significantly more than the exception. At Step 2B, an examiner is to determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception. This includes an analysis of the remainder of claim elements and how they add any inventive step to the claim.
The Examples go through the analysis of explaining each part of the two-step approach to show how the claims all meet Step 1, but vary with regard to Step 2. There is a good presentation of the analysis of both Steps 2A and 2B, and how the various claim examples relate to Supreme Court precedent. For example, in claims where it is determined that the limitations are directed towards an abstract idea, the explanation of how any additional elements add enough of an inventive step to overcome the abstract idea can be very helpful.
The Examples issued by the Patent Office include four claim sets that were deemed patent eligible, and four that were found ineligible.
Examples of claims that were or would be patent eligible include the following:
1. A method and computer medium for isolating and removing malicious code from electronic messages. The claims were not directed towards an abstract idea because they included a concept inextricably tied to computer technology and distinct from the types of concepts found by the courts to be abstract.
2. E-Commerce Outsourcing System/Generating a Composite Web Page. The claim was found not be directed towards an abstract idea because it does not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.
3. Methods and systems for halftoning a gray scale image. In the three claims provided in the Example, it is stated that they include mathematical steps that would constitute an abstract idea. However, the additional analysis of Step 2B above leads to a finding that taking all the additional claim elements individually, and in combination, the claim as a whole amounts to significantly more than the abstract idea of generating a blue noise mask, and therefore, the claims contain patent eligible subject matter.
4. A method and system for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals. The claims include calculating steps, and therefore, include mathematical equations that would make them abstract ideas. However, the additional limitations of the claim placed upon the application of the claimed mathematical operations show that the claim is not directed to performing mathematical operations on a computer alone. Rather, the combination of elements impose meaningful limits in that the mathematical operations are applied to improve an existing technology (global positioning) by improving the signal-acquisition sensitivity of the receiver to extend the usefulness of the technology into weak-signal environments and providing the location information for display on the mobile device, which indicates that the claims include patent eligible subject matter.
Examples of claims that were or would be patent ineligible include the following:
1. Method of generating a device profile by generating first and second data and combining the same. While the claim met Step 1 of the analysis, it was found to be a mere gathering and combination that employed mathematical relationships, thus making it an abstract idea. The claim did not include any additional steps beyond the abstract generating and combining and thus, failed Step 2, making the claim ineligible.
2. Computer system for electronically managing a game of Bingo. The claim included a computer and a program run on the computer. The program included steps that could be performed mentally, making the claim an abstract idea. The mere inclusion of a computer with a CPU did not add enough of an inventive step under Step 2B to overcome the abstract idea, and the claim was found to include ineligible subject matter.
3. Methods for conducting reliable transactions in an e-commerce environment. The claim included steps of creating a contractual relationship, which is an abstract idea. Analyzing the claim as whole for an inventive concept, the claim limitations in addition to the abstract idea include a computer application running on a computer and the computer network. This is simply a generic recitation of a computer and a computer network performing their basic functions. Therefore, the claim is not patent eligible.
4. A method for distribution of products over the Internet via a facilitator. The claim describes the concept of using advertising as an exchange or currency. This concept is similar to the concepts involving human activity relating to commercial practices (e.g., hedging in Bilski) that have been found by the courts to be abstract ideas. When viewed either as individual limitations or as an ordered combination, the claim as a whole does not add significantly more to the abstract idea of using advertising as an exchange or currency (The answer in Step 2B is no). The claim is not patent eligible.
These Examples should help both Applicants and Examiners navigate the new patent eligibility landscape under the Supreme Court's recent holdings on 35 U.S.C. § 101.