What is an Abstract Idea?July 24, 2018

In January of 2018, the United States Patent and Trademark Office (USPTO) published its latest revision of the Manual of Patent Examining Procedure (MPEP). With regard to patent eligibility, especially on the issue of abstract ideas, the MPEP was extensively updated.

The January revision lays out a similar process as was previously used to determine whether a proposed invention is patent eligible. The claimed invention must fall into one of the four statutory categories recited in 35 U.S.C. 101 (i.e. it must be a process, machine, manufacture, or composition of matter). Discussion of a recent Federal Circuit case where a claimed invention was found to not be patentable based on failing to be directed to statutory subject matter can be found here. In addition to the claimed invention falling into one of the four statutory categories of patent eligible subject matter, it must not be directed to a law of nature, natural phenomena, or an abstract idea (judicial exceptions) unless the claim recites additional elements that amount to significantly more than the judicial exception.

Since neither the courts nor the legislature have defined what constitutes an abstract idea, when determining whether a claim is directed to an abstract idea, examiners are instructed to identify the claimed concept and compare it to concepts that courts have previously decided to be abstract. The latest MPEP revision provides many examples of what courts have identified as abstract ideas.

The MPEP articulates four concepts that the courts have identified as abstract ideas: “fundamental economic practices”, “certain methods of organizing human activity”, “an idea ‘of itself’”, and “mathematical relationships/formulas”. Additionally, the MPEP described claims that are not directed to abstract ideas. The MPEP states that “if a claim is based on or involves an abstract idea, but does not recite it, then the claim is not directed to an abstract idea”. Additionally, “if a claim recites an abstract idea, but the claim as a whole is directed to an improvement or otherwise clearly does not seek to tie up the abstract idea, then the claim is not directed to an abstract idea”.

Further, the MPEP discusses claims directed to improvements in computer functionality. These types of claims are not automatically considered abstract ideas and may be patentable when appropriately claimed. In order for an improvement in computer functionality to be patentable, the specification “should disclose sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement, and the claim itself must reflect the improvement in technology”. The MPEP also states that “if a claimed process can be performed without a computer … it cannot improve computer technology” and therefore is not patentable.

Without a definition of what constitutes an abstract idea, the issue is still murky, but the January MPEP revision has offered some guidance.