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  • Justin T. Valentine

Wading Through the Murky Waters of Patent Eligibility

In our previous post, we examined a broad overview of the patent process.  In that post, we touched on the first step in the patent examination process – determining whether the invention comprises patent eligible subject matter.  In this post, we dive slightly more deeply into the ever-changing landscape of patent eligibility.  As with all blog posts, this is a short summary of the law and does not cover every detail.  For specific questions regarding your invention, please contact one of our licensed patent attorneys for a free consultation.


35 U.S.C. 101 is a section of the United States Code that outlines the basic criteria for patent eligibility. It states:


"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."


This statute sets forth five categories of inventions eligible for patent protection: processes, machines, manufactures, compositions of matter, and improvements thereof.  These categories encompass a wide range of innovations, from chemical compounds to software algorithms. 


However, the courts have interpreted 35 U.S.C. 101 to exclude so-called “judicial exceptions.”  These include abstract ideas, laws of nature, and natural phenomena.  Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216, 110 USPQ2d 1976, 1980 (2014) (citing Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589, 106 USPQ2d 1972, 1979 (2013).   Even if an invention falls under a judicial exception, however, it is not immediately doomed to unpatentability.  An invention may nevertheless be patentable under a judicial exception to 35 U.S.C. 101 if it adds elements which amount to significantly more than the judicial exception.  This second piece is sometimes termed the “search for the inventive concept.” Alice Corp., 573 U.S. at 217-18, 110 USPQ2d at 1981 (Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012).  Thus, if an invention under a judicial exception comprises an inventive concept which amounts to significantly more than just the judicial exception, the invention may be patentable.  


A particular common situation involving the application of 35 U.S.C. 101 is software applications.  Typically, if the invention is an application of existing mathematical relationships or algorithms on a computer with nothing more added, it is not patent eligible.  As our partner Cassandra Wilkinson would say, “You can’t patent math.” MPEP § 2106.05(f) provides several examples of inventions which do no more than merely invoke computers to perform existing processes:


i. A commonplace business method or mathematical algorithm being applied on a general purpose computer, Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 573 U.S. 208, 223, 110 USPQ2d 1976, 1983 (2014); Gottschalk v. Benson, 409 U.S. 63, 64, 175 USPQ 673, 674 (1972); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015);


ii. Generating a second menu from a first menu and sending the second menu to another location as performed by generic computer components, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1243-44, 120 USPQ2d 1844, 1855-57 (Fed. Cir. 2016);

iii. A process for monitoring audit log data that is executed on a general-purpose computer where the increased speed in the process comes solely from the capabilities of the general-purpose computer, FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016);


iv. A method of using advertising as an exchange or currency being applied or implemented on the Internet, Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715, 112 USPQ2d 1750, 1754 (Fed. Cir. 2014);


v. Requiring the use of software to tailor information and provide it to the user on a generic computer, Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370-71, 115 USPQ2d 1636, 1642 (Fed. Cir. 2015); and


vi. A method of assigning hair designs to balance head shape with a final step of using a tool (scissors) to cut the hair, In re Brown, 645 Fed. App'x 1014, 1017 (Fed. Cir. 2016) (non-precedential).


The Alice/Mayo test, and others such as the “machine-or-transformation test,” are among the many considerations which define patent eligible subject matter under 35 U.S.C. 101.  Each invention or situation is different and may present unique challenges and considerations under 35 U.S.C. 101. 


In addition to the four categories of patent eligible subject matter, 35 U.S.C. 101 requires that the invention be new and useful.  To be new, the invention must not be identical or an obvious variation of any prior art.  This also means that an inventor may only obtain one patent for each invention.  To be useful, the invention may merely have some use currently in society but does not necessarily need to be the most useful.  A few such inventions which would not pass this test are those which are currently physically impossible, such as perpetual motion machines or time travel machines.  If someone did invent a device which appears to defy known physical laws, the USPTO would likely require proof that the invention in fact exists and operates as asserted to overcome a 101 rejection.


This has been a short overview of 35 U.S.C. 101 concerning patent eligible subject matter.  Future blog posts may dive deeper into specific elements of 35 U.S.C. 101, including a closer examination of what may amount to “significantly more” than a judicial exception.  For assistance with patenting your invention or questions concerning the patent process, our licensed patent attorneys are available for a free consultation at (918) 587-2000.

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