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 Corp15 and 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.
[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.