2106 Patent Subject Matter Eligibility
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I. TWO CRITERIA FOR SUBJECT MATTER ELIGIBILITY
First, the claimed invention must be to one of the four statutory categories.
- 35 U.S.C. 101 defines the four categories of invention that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter.
- The latter three categories define "things" or "products" while the first category defines "actions" (i.e., inventions that consist of a series of steps or acts to be performed).
Second, the claimed invention also must qualify as patent-eligible subject matter, i.e., the claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception.
- The judicial exceptions (also called "judicially recognized exceptions" or simply "exceptions") are subject matter that the courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature).
Because abstract ideas, laws of nature, and natural phenomenon "are the basic tools of scientific and technological work", the Supreme Court has expressed concern that monopolizing these tools by granting patent rights may impede innovation rather than promote it.
- However, the Court has also emphasized that an invention is not considered to be ineligible for patenting simply because it involves a judicial exception.
- Accordingly, the Court has said that integration of an abstract idea, law of nature or natural phenomenon into a practical application may be eligible for patent protection.
The Supreme Court in Mayo laid out a framework for determining whether an applicant is seeking to patent a judicial exception itself, or a patent-eligible application of the judicial exception.
This framework, which is referred to as the Mayo test or the Alice/Mayo test, is discussed in further detail in subsection III, below.
- The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception).
- If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.
- The Supreme Court has described the second part of the test as the "search for an 'inventive concept'".
The Alice/Mayo two-part test is the only test that should be used to evaluate the eligibility of claims under examination.
- While the machine-or-transformation test is an important clue to eligibility, it should not be used as a separate test for eligibility.
- Instead it should be considered as part of the "integration" determination or "significantly more" determination articulated in the Alice/Mayo test.
- Likewise, eligibility should not be evaluated based on whether the claim recites a "useful, concrete, and tangible result"
- Lastly, eligibility should not be evaluated based on whether the claimed invention has utility, because "[u]tility is not the test for patent-eligible subject matter."
Examiners are reminded that 35 U.S.C. 101 is not the sole tool for determining patentability; 35 U.S.C. 112 , 35 U.S.C. 102, and 35 U.S.C. 103 will provide additional tools for ensuring that the claim meets the conditions for patentability.
As the Supreme Court made clear in Bilski:
The § 101 patent-eligibility inquiry is only a threshold test. Even if an invention qualifies as a process, machine, manufacture, or composition of matter, in order to receive the Patent Act’s protection the claimed invention must also satisfy ‘‘the conditions and requirements of this title.’’ § 101. Those requirements include that the invention be novel, nonobvious, and fully and particularly described.
II. ESTABLISH BROADEST REASONABLE INTERPRETATION OF CLAIM AS A WHOLE
It is essential that the broadest reasonable interpretation (BRI) of the claim be established prior to examining a claim for eligibility.
The BRI sets the boundaries of the coverage sought by the claim and will influence whether the claim seeks to cover subject matter that is beyond the four statutory categories or encompasses subject matter that falls within the exceptions.
- Evaluating eligibility based on the BRI also ensures that patent eligibility under 35 U.S.C. 101 does not depend simply on the draftsman’s art.
Claim interpretation affects the evaluation of both criteria for eligibility.
For example, in Mentor Graphics v. EVE-USA, Inc., claim interpretation was crucial to the court’s determination that claims to a "machine-readable medium" were not to a statutory category.
In Mentor Graphics, the court interpreted the claims in light of the specification, which expressly defined the medium as encompassing "any data storage device" including random-access memory and carrier waves.
Although random-access memory and magnetic tape are statutory media, carrier waves are not because they are signals similar to the transitory, propagating signals held to be non-statutory in Nuijten.
Accordingly, because the BRI of the claims covered both subject matter that falls within a statutory category (the random-access memory), as well as subject matter that does not (the carrier waves), the claims as a whole were not to a statutory category and thus failed the first criterion for eligibility.
With regard to the second criterion for eligibility, the Alice/Mayo test, claim interpretation can affect the first part of the test (whether the claims are directed to a judicial exception).
For example, the patentee in Synopsys argued that the claimed methods of logic circuit design were intended to be used in conjunction with computer-based design tools, and were thus not mental processes.
The court disagreed, because it interpreted the claims as encompassing nothing other than pure mental steps (and thus falling within an abstract idea grouping) because the claims did not include any limitations requiring computer implementation.
In contrast, the patentee in Enfish argued that its claimed self-referential table for a computer database was an improvement in an existing technology and thus not directed to an abstract idea.
The court agreed with the patentee, based on its interpretation of the claimed "means for configuring" under 35 U.S.C. 112(f) as requiring a four-step algorithm that achieved the improvements, as opposed to merely any form of storing tabular data.
Claim interpretation can also affect the second part of the Alice/Mayo test (whether the claim recites additional elements that amount to significantly more than the judicial exception).
For example, in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., where the court relied on the construction of the term "enhance" (to require application of a number of field enhancements in a distributed fashion) to determine that the claim entails an unconventional technical solution to a technological problem.
III. SUMMARY OF ANALYSIS AND FLOWCHART
Examiners should determine whether a claim satisfies the criteria for subject matter eligibility by evaluating the claim in accordance with the following flowchart.
- The flowchart illustrates the steps of the subject matter eligibility analysis for products and processes that are to be used during examination for evaluating whether a claim is drawn to patent-eligible subject matter.
- It is recognized that under the controlling legal precedent there may be variations in the precise contours of the analysis for subject matter eligibility that will still achieve the same end result.
- The analysis set forth herein promotes examination efficiency and consistency across all technologies.
As shown in the flowchart, Step 1 relates to the statutory categories and ensures that the first criterion is met by confirming that the claim falls within one of the four statutory categories of invention.
Step 2, which is the Supreme Court’s Alice/Mayo test, is a two-part test to identify claims that are directed to a judicial exception (Step 2A) and to then evaluate if additional elements of the claim provide an inventive concept (Step 2B) (also called "significantly more" than the recited judicial exception).
The flowchart also shows three pathways (A, B, and C) to eligibility:
- Pathway A: Claims taken as a whole that fall within a statutory category (Step 1: YES) and, which may or may not recite a judicial exception, but whose eligibility is self-evident can be found eligible at Pathway A using a streamlined analysis.
- Pathway B: Claims taken as a whole that fall within a statutory category (Step 1: YES) and are not directed to a judicial exception (Step 2A: NO) are eligible at Pathway B. These claims do not need to go to Step 2B.
- Pathway C: Claims taken as a whole that fall within a statutory category (Step 1: YES), are directed to a judicial exception (Step 2A: YES), and recite additional elements either individually or in an ordered combination that amount to significantly more than the judicial exception (Step 2B: YES) are eligible at Pathway C.
Claims that could have been found eligible at Pathway A (streamlined analysis), but are subjected to further analysis at Steps 2A or Step 2B, will ultimately be found eligible at Pathways B or C.
- Thus, if the examiner is uncertain about whether a streamlined analysis is appropriate, the examiner is encouraged to conduct a full eligibility analysis.
- However, if the claim is not found eligible at any of Pathways A, B or C, the claim is patent ineligible and should be rejected under 35 U.S.C. 101.
Regardless of whether a rejection under 35 U.S.C. 101 is made, a complete examination should be made for every claim under each of the other patentability requirements: 35 U.S.C. 102, 103, 112, and 101 (utility, inventorship and double patenting) and non-statutory double patenting.
Please note that we will refer to this as the 'flowchart' in subsequent sections.
» 2106.03 Eligibility Step 1: The Four Categories of Statutory Subject Matter
