On January 27, 2015, the U.S. Patent and Trademark Office
(USPTO) released a list of examples1 to supplement the
2014 Interim Guidance on Patent Subject Matter
Eligibility.2 The examples are directed toward
computer-implemented inventions, and include four claim sets that
the USPTO suggests are patent eligible and four that are not. The
examples apply the test for subject matter eligibility as described
by the U.S. Supreme Court in Alice Corporation Pty. Ltd. v. CLS
Bank International, et al.3
The USPTO's patent examiner guidance for subject matter
eligibility breaks down into three parts.4 First, the
patent examiner must determine if the claim is a process, machine,
manufacture, or composition of matter.5 If so, the
patent examiner must then determine if the claim is directed to a
judicial exception such as a law of nature, a natural phenomenon,
or an abstract idea.6 An abstract idea may include
"a fundamental economic practice, a method of organizing human
activity, an idea itself (standing alone), or a mathematical
relationship."7 Finally, if the claim is directed
to an abstract idea, the patent Examiner must determine if the
claim recites additional elements that amount to significantly more
than the judicial exception.8 All example claims
provided by the USPTO satisfied the first part as one of a process,
a machine, or a manufacture.
The first example provided by the USPTO includes hypothetical
software method and computer-readable medium claims directed to
isolating and removing malicious code from electronic
messages.9 The USPTO found that the claims were
"directed towards performing isolation and eradication of
computer viruses, worms, and other malicious code, a concept
inextricably tied to computer technology and distinct from the
types of concepts found by the courts to be
abstract."10 Thus, the USPTO found that the claims
did not recite an abstract idea, and are patent eligible.
The second example comes from the 2014 Federal Circuit decision of
DDR Holdings, LLC v. Hotels.com et al.11 In
interpreting the Federal Circuit's decision, the USPTO found
that, although the claim recites "webpages offering commercial
opportunities," the claim is "directed to automatically
generating and transmitting a webpage in response to activation of
a link using data identified with a source webpage having certain
visually perceptible elements."12 Further,
"the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in
the realm of computer networks."13 Since no
fundamental economic practice, method of organizing human activity,
idea itself, or mathematical relationship was identified in the
claim, the claim is patent eligible.14
The third and fourth examples involve hypothetical claims based on
the 2010 Federal Circuit decisions in Research Corporation
Technologies Inc. v. Microsoft Corp15and SiRF
Technology Inc. v. International Trade
Commission,16 respectively. In both examples, the
claims recite mathematical operations that qualify as an abstract
idea. However, both sets of claims were found to have additional
limitations amounting to significantly more than the mathematical
operation, thus rendering them patent eligible.
In the third example, the claim recites additional steps of using
a comparison of a mask to an image to transform the image into an
array and then converting the array into another type of
image.17 The USPTO stated that tying the mathematical
operation to the processor's ability to process digital images
added meaningful limitations to the abstract idea.18
Furthermore, when viewing the claim elements as an ordered
combination, according to the USPTO, the recited steps improve the
functioning of the computer itself by using less memory, having
faster computation times, and having improved image quality over
previous techniques.19
In the fourth example, the claims applied mathematical operations
to improve signal reception and extend the availability of GPS
technology into weak signal locations.20 The USPTO found
that the claims recitation at a high level of generality of
computer components did not add any additional meaningful
limitations to create a patent-eligible claim.21
However, the USPTO further explained that by improving an existing
technology, the combination of elements amounted to more than an
abstract idea.22
In considering the four eligible subject-matter examples, the
first two examples deal with software internal to a computer
system, and were found not to include concepts relating to a
fundamental economic practice, a method of organizing human
activity, or a mathematical relationship. Further, the analysis by
the USPTO of the first two examples relied on the language of the
claims to avoid a judicial exception. Claim language in the third
and fourth examples, on the other hand, was found to recite
mathematical operations that qualified for a judicial exception as
an abstract idea. In finding the third and fourth claims to be
patent eligible, the USPTO appears to be using a rationale external
to the language of the claims to overcome the mathematical
operation judicial exception. For example, the USPTO relies on an
improvement to an existing technology that uses less memory, has
faster computation times, and improves signal reception, none of
which are recited limitations in the example claims.
The next four examples provided in the guidance by the USPTO
include non-patent-eligible claims from the following 2014,
post-Alice, decisions by the Federal Circuit: Digitech Image
Tech., LLC v. Electronics for Imaging, Inc.,23
Planet Bingo, LLC v. VKGS LLC,24 buySAFE,
Inc. v. Google, Inc.,25 and Ultramercial v.
Hulu and WildTangent,26 respectively.
The Digitech invention was directed toward solving image
distortion from both a source device (e.g., camera, scanner, etc.)
and a destination device (e.g., monitor, printer,
etc.).27 The representative method claim uses
mathematical operations to generate two sets of data and combines
the two data sets into a device profile.28 The Federal
Circuit found that the mathematical operations constitute an
abstract idea,29 and that "the claim does not
include additional elements beyond the abstract idea of gathering
and combining data."30 Interestingly, the USPTO
notes in its guidance that the claim was written "without
limit to any use of the device profile," implying that
limiting the use may have helped establish patent
eligibility.31
The Planet Bingo invention was directed toward
implementing an automated bingo game.32 The claimed
bingo system was found to be both capable of being performed
mentally and similar to the judicial exception of organizing human
activity.33 Accordingly, the claimed system was found to
be directed to an abstract idea with "purely generic computer
functions" that are "mere instructions" to implement
the idea on a computer.34 As no significant limitations
were found, the claim was not patent eligible.35
The buySAFE invention, the seventh example, was directed
toward providing a performance guaranty in an e-commerce
environment.36 The claim was found to be directed toward
creating a contractual relationship and, thus, a fundamental
economic practice.37 No additional claim limitations
other than "a generic recitation of a computer and a computer
network performing their basic functions" were
found.38 As the claim contained no additional
significant limitations, the claim was not patent
eligible.39
The Ultramercial invention, the last example provided,
was directed toward providing content in exchange for viewing
advertisements.40 The claim was found to recite the
abstract idea of "human activity relating to commercial
practices."41 The claim's additional
limitations, such as "accessing and updating an activity log,
requiring a request from the consumer to view the advertising,
restricting public access, and using the Internet as an information
transmitting medium," were considered to be
"insignificant pre-solution activity because such activity is
necessary and routine in implementing the concept of using
advertising as an exchange."42 As the claim was
found not to have additional significant limitations, the claim was
not patent eligible.43
Each of the four non-eligible examples provided by the USPTO uses
a computer to implement the claimed invention, yet each was
determined to be ineligible subject matter. Digitech, however,
suggests that a claim directed to collecting data through a
mathematical relationship may be patent eligible if a use of the
collected data is also claimed. The last three examples demonstrate
that if the claims can be characterized as directed to organizing
human activity or an economic practice, it may be difficult to
overcome the judicial exception. The USPTO hints, however, that the
use of non-generic computer functions may overcome the judicial
exception.
The new USPTO examples provided added guidance for avoiding
rejections of patent ineligible subject matter. For instance,
to avoid a judicial exception, applicants should consider avoiding
claim features that may be interpreted as being directed to
economic practices, organizing human activity, or mathematical
equations. If the claims are only directed to economic
practices or organizing human activity, the application will likely
be rejected as being directed to patent ineligible subject
matter. Further, the specification should describe problems
solved by the invention and technical improvements over existing
technology, such as less memory usage, faster computation speeds,
or improvement in signal reception.
Footnotes
[1] USPTO, Examples: Abstract Ideas, January 27, 2015, available at http://www.uspto.gov/patents/law/exam/abstract_idea_examples.pdf.
[2] 79 Fed. Reg. 241, 74618 (Dec. 16, 2014).
[3] 134 S. Ct. 2347 (Jun. 19, 2014).
[4] 79 Fed. Reg. 241, at 74621.
[5] Id.
[6] Id.
[7] Examples, p. 3.
[8] 79 Fed. Reg. 241, at 74621.
[9] Examples, p. 1.
[10] Id.
[11] 113 USPQ2d 1097 (Fed. Cir. 2014).
[12] Examples, p. 5.
[13] Id. p. 6.
[14] Id.
[15] 627 F.3d 859 (Fed. Cir. 2010).
[16] 601 F.3d 1319 (Fed. Cir. 2010).
[17] Examples, p. 9.
[18] Id.
[19] Id.
[20] Id. p. 12-13.
[21] Id. p. 12.
[22] Id. p. 12-13.
[23] 758 F.3d 1344 (Fed. Cir. 2014).
[24] 576 Fed. Appx. 1005 (Fed. Cir. 2014).
[25] 765 F.3d 1350 (Fed. Cir. 2014).
[26] 2014 U.S. App. LEXIS 21633 (Fed. Cir. 2014).
[27] Examples, p. 13.
[28] Id. p. 14
[29] Id. p. 14-15.
[30] Id. p. 15.
[31] Id. p. 14
[32] Id. p. 15.
[33] Id. p. 16.
[34] Id.
[35] Id.
[36] Id. p. 17.
[37] Id.
[38] Id. p. 18.
[39] Id.
[40] Id.
[41] Id. p. 19
[42] Id.
[43] Id. p. 20.
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.