An abstract idea – by itself – is not patentable.
This basic tenet is found in patent systems all over the world.
However, it turns out to be surprisingly difficult to draw the line
between an abstract idea and an invention that is patentable. This
helps to explain why the United States Patent & Trademark
Office (USPTO) has supplemented examination guidelines concerning
patentable subject matter for the third time in as many years with
its May 2016 Subject Matter Eligiblity Update.
In 2014, the U.S. Supreme Court delivered what is currently the
last word on patentable subject matter. In the case of Alice
Corp v. CLS Bank International (Alice), the Court
confirmed that a two-part test it had set out in a 2012 decision
(Mayo Collaborative Service v. Prometheus Laboratories,
Inc.) was indeed to be used in evaluating all inventions for
patentability. The test requires that patent claims: 1) belong to a
statutory category of invention, such as a process, machine or
composition of matter; and 2) either not be directed to a judicial
exception from patentability, such as a law of nature, a natural
phenomenon or an abstract idea, or else that they contain
"significantly more" than the law of nature or abstract
The question of what amounts to "significantly more"
is not an easy one to answer. In the immediate aftermath of the
Alice decision, patent examiners had few signposts to
reference when evaluating applications. Earlier tests set down by
the courts – which examiners previously had relied upon
– were no longer dispositive. Recognizing this, the USPTO
issued interim guidance in December 2014 to aid examiners, which
were supplemented in July 2015 with additional examples and
Even with the benefit of regular updates to the examination
guidelines, there has been considerable variability in the
application of subject matter rules by USPTO examiners. The most
recent guidance aims to enhance uniformity across all application
First, when deciding that a claim recites an abstract idea,
examiners are instructed to identify the specific abstract idea and
to explain why the identified abstract idea corresponds to a
concept that the courts have identified as such. Examiners are also
expected to be reasonably familiar with relevant court cases, so
that decisions are not taken out of context, and to avoid going
beyond those abstract ideas that have been identified by the
courts. Similar procedures are to be followed for laws or products
If an abstract idea or natural product or law has been
identified, examiners are directed to consider whether
"significantly more" can be found in the claims. In
particular, examiners should assess the additional elements in the
claims both individually and as a combination. The guidelines note
that "it is particularly critical to address the combination
of additional elements, because while individually-viewed elements
may not appear to add significantly more, those additional elements
when viewed in combination may amount to significantly more than
the exception by meaningfully limiting the judicial
Where "significantly more" cannot be found, examiners
are directed to explain their rationale in sufficient detail to
allow the applicant to respond effectively.
The guidelines also provide specific instructions for certain
categories of invention. For example, regarding "generic
computer" components, the supplement notes that although some
routine, conventional computer functions have been determined not
to add "significantly more", the courts have also found
computer-implemented methods to be eligible where generic computer
components perform activities that are not merely generic.
This is an area of patent law that is actively evolving. Not
surprisingly, the USPTO has received a significant amount of public
comment, and intends to continue accepting comments for the
foreseeable future. Therefore we can expect the USPTO to issue
further guidance for its examiners in the coming years as the law
regarding patentable subject matter settles.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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