After filing a patent application for an invention with the United States Patent and Trademark Office (“USPTO”), a USPTO patent attorney analyzes the patent application to ensure that the patent application meets the legal requirements for patentability before a patent is granted on the invention.  One of the issues considered by a USPTO patent attorney is if the invention described is “patent eligible subject matter” under Section 101 of the Patent Act. Whether an invention is patent eligible subject matter can be a major obstacle to obtaining a patent for software related inventions.

The USPTO recently released it’s 2019 Patent Eligibility Guidance (“2019 PEG”) for USPTO patent attorneys to analyze whether claims of patent applications for inventions, including software related inventions, are directed to patent eligible subject matter. The 2019 PEG and the other USPTO guidance on the topic helps private practitioners draft claims that may be patent eligible subject matter. This article discusses the 2019 PEG.

Before discussing the 2019 PEG, some background is necessary on the test to determine if a patent’s claims are directed to patent eligible subject matter. 35 U.S.C. § 101 is the statute that codifies the eligible subject matter requirement.  While the language of § 101 is broad, the Supreme Court has long recognized that “laws of nature,” “natural phenomena” and “abstract ideas” are not patentable.  For software related inventions the main issue pertaining to patentable subject matter is whether the claims are directed to an “abstract idea” and thus not patentable.

The Supreme Court adopted a two-part test for determining whether a claim falls within the abstract idea exception, thereby rendering the claim patent-ineligible. The test is referred to as the “Abstract Idea Ineligibility Test.”   If either Part 1 or Part 2 of the Abstract Idea Ineligibility Test (described below) is not satisfied for a particular claim at issue, that claim is patent-eligible.

Under Part 1, it must be determined if a claim is directed to an “abstract idea.”  If a claim is directed to an abstract idea, Part 2 of the Abstract Idea Ineligibility Test asks whether the claim includes “an element or combination of elements” that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”

The 2019 PEG revises Part 1 into a two-prong analysis.  Under that 2019 PEG, for Part 1, one must look to whether the claim recites:

any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human interactions such as a fundamental economic practice, or mental processes) (“Prong 1”); and

additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)) (“Prong 2”).

For Prong 1 of Part 1 of the Abstract Idea Ineligibility Test, the procedure for determining whether a claim “recites” an “abstract idea” requires an examining attorney to identify the specific limitations in the claim under examination that the examining attorney believes recites an abstract idea and determine whether the identified claim falls within at least one of the groupings of abstracts ideas identified in the 2019 PEG.

The groupings for Prong 1 identified by the 2019 PEG “extracts and synthesizes key concepts identified by the courts as abstract ideas to explain the abstract idea exception.” The groupings identified by the 2019 PEG are the following:

  • Mathematical concepts-mathematical relationships, mathematical formulas or equations, mathematical calculations;
  • Certain methods of organizing human activity fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and,
  • Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
  • Claim limitations that do not fall within the enumerated groupings should not be treated as abstract ideas except in rare circumstances and the patent claims are patent eligible subject matter. If the identified limitation(s) falls within any of the groupings of abstract ideas enumerated in the 2019 PEG, the analysis should proceed to Prong 2.

Prong 2 of Part 1 of the Abstract Idea Ineligibility Test is a new procedure not found in prior guidance.  Prong 2 requires an examining attorney to identify whether there are any additional elements recited in the claim beyond the judicial exception(s) and evaluating those additional elements to determine whether they integrate the exception into a practical application of the exception.    “Integration into a practical application” requires an additional element or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to “monopolize the exception.”

An examining attorney must use the considerations laid out by the Supreme Court and the Federal Circuit to evaluate whether the judicial exception is “integrated into a practical application.”  Most of the considerations are discussed in MPEP 2106.05 and sub-sections 2106.05(a) through 2106.05(h).  Unless otherwise specified in the 2019 PEG, an examining attorney should evaluate these considerations in Prong 2 of Part 1 the same way they evaluate these considerations in Part 2 of the Abstract Idea Ineligibility Test. Limitations that are indicative of integration into a practical application include the following:

  • improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05(a));
  • applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition –see Vanda memo;
  • applying the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b));
  • effecting a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)); and
  • applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see MPEP 2106.05(e) and Vanda memo).

Limitations that are not indicative of integration into a practical application include the following:

  • Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea; (see MPEP 2106.05(f));
  • Adding insignificant extra-solution activity to the judicial exception (see MPEP 2106.05(g)); and,
  • Generally linking the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)).

Only if a claim (1) recites a judicial exception (Prong 1), AND (2) does not integrate that exception into a practical application (Prong 2), does one go to Part 2 of the Abstract Idea Ineligibility Test.  Part 2 looks to whether the claim:

  • adds a specific limitation beyond the judicial exception that are not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or
  • simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.

It should be noted that there is no evaluation of well-understood, routine, conventional (“WURC”) activity in Prong 2 of Part 1.  USPTO examining Attorneys should give weight to all of the claimed additional elements in Prong 2, even if those elements represent WURC activity.   Because Part 1 excludes consideration of WURC, a claim that includes WURC elements may still integrate an exception into a practical application.  USPTO examining attorneys are not evaluate WURC activity unless the analysis proceeds to Part 2 of the Abstract Idea Ineligibility Test.

In Part 2, USPTO examining attorneys are to evaluate whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception.  If the claim as a whole amounts to significantly more than the exception itself (there is an inventive concept in the claim), the claim is eligible. If the claim as a whole does not amount to significantly more (there is no inventive concept in the claim), the claim is ineligible.  In Part 2, the USPTO examining Attorney is to identify whether there are any additional elements recited in the claim beyond the judicial exception(s), and evaluate those additional elements individually and in combination to determine whether they amount to significantly more, using the considerations discussed previously.

Revised Part 1 overlaps with Part 2, and thus, many of the considerations need not be reevaluated in Part 2 because the answer will be the same.  However, if a USPTO examining attorney had previously concluded under revised Part 1 that an additional element was insignificant extra-solution activity, they should still reevaluate that conclusion in Part 2 according to the USPTO guidance.  If such reevaluation indicates that the element is unconventional or otherwise more than what is WURC activity in the field, this finding may indicate that an inventive concept is present and that the claim is thus eligible.

For example, when evaluating a claim reciting an abstract idea such as a mathematical equation and a series of data-gathering steps that collect a necessary input for the equation, a USPTO examining attorney might consider the data-gathering steps to be insignificant extra-solution activity in revised Part 1, and therefore find that the judicial exception is not integrated into a practical application. However, when the USPTO examining attorney reconsiders the data gathering steps in Part 2, the USPTO examining attorney could determine that the combination of steps gather data in an unconventional way and, therefore, provide an “inventive concept,” rendering the claim eligible at Part 2.

To determine how an applicant should respond to an office action depends on the substance of the office action and other factors.  An attorney experienced in handling office actions stating that a software related invention is not patentable subject matter under 35 U.S.C. § 101 can advise an applicant as to the option most suitable for responding to such an office action.  The attorneys at The Plus IP Firm have represented numerous clients before the USPTO and are available for a consultation regarding your options for responding to office actions stating that an invention is not patentable subject matter under 35 U.S.C. § 101.  For more information about Derek Fahey, this article’s author, click HERE.