Highlights From USPTO's Abstract Idea Examples

On January 27, 2015, the United States Patent and Trademark Office (USPTO) issued a set of examples for analyzing claims under the abstract idea exception to subject matter patent eligibility. The Abstract Idea Examples supplement the USPTO’s 2014 Interim Guidance on Patent Subject Matter Eligibility. As we analyzed in our prior alert, “New Patent Office Guidance Takes Steps Toward Clarifying Subject Matter Eligibility,” the Guidance follows the two-part Mayo test that the Supreme Court set forth in Mayo v. Prometheus and later, in Alice v. CLS Bank, applied to claims directed to an abstract idea. The Abstract Idea Examples complement the Nature-Based Product Examples, which the USPTO released along with the Guidance. Detailed explanations can be found in our previous analysis of the Guidance and our analysis of the USPTO forum on subject matter eligibility.

As outlined below, the Abstract Idea Examples shed light on the eligibility of claims that are analyzed under the abstract idea exception, e.g., computer-based claims, by providing practical details. But the Abstract Idea Examples still leave many issues unresolved, including the meaning of a number of fundamental concepts in the subject matter eligibility test. In that regard, we are currently compiling written comments on the Guidance, which are due to the USPTO by March 16, 2015. Please contact us if you would like to participate in drafting the comments.

1. Not All Computer-Based Claims Are Directed to an Abstract Idea: The Abstract Idea Examples describe two instances of computer-based claims, in particular software claims, that are not directed to an abstract idea because (A) the claims are inextricably tied to computer technology or (B) the claims overcome a problem specifically arising in the computer technology by using a solution necessarily rooted in the computer technology.

Because the answer to Mayo step 1 (or Guidance step 2A) is “no” for these types of claims, they qualify as subject matter eligible without requiring a more detailed analysis to determine whether the claims recite an inventive concept that amounts to significantly more than the abstract idea (i.e., Mayo step 2 or Guidance step 2B).

2. Claims That Are Eligible Because They Recite an Inventive Concept: The Abstract Idea Examples also describe claims that are directed to abstract ideas but qualify as subject matter eligible because they recite inventive concepts. Particularly, the inventive concepts include improving an existing technology, such as computer technology (e.g., computation time or capacity) or another technology (e.g., digital imaging or GPS).

3. Reciting a Generic Computer Needs More to Qualify: The Abstract Idea Examples reiterate that a claim does not qualify as subject matter eligible by merely reciting generic computer parts, e.g., a processor or a memory, that perform their routine functions. Such a claim may qualify as subject matter eligible, however, if the recited generic computer parts and functions perform features that otherwise qualify as subject matter eligible by, for example, improving an existing technology.

4. Some Unanswered Questions: As a result of the ambiguities in recent Supreme Court and Federal Circuit cases, the Abstract Idea Examples also leave a number of questions unanswered.

• Under Mayo step 1 (or Guidance step 2A), what does it mean for a claim “as a whole” to be “directed to” an abstract idea? As we have previously noted, step 2A asks whether a claim “as a whole” is directed to an abstract idea, but the Guidance and the Abstract Idea Examples go on to state that a claim satisfies this condition simply when it recites, or its recitation includes, an element that is an abstract idea, e.g., a mathematical operation. Moreover, the Abstract Idea Examples do not shed much additional light on what is an “abstract idea.” The question will likely continue to invoke the famous answer: “we will know it when we see it.”

• Under Mayo step 2 (or Guidance step 2B), what is as an “inventive concept”? The Abstract Idea Examples identify patent-eligible claims that recite an inventive concept, but some examples such as example 2 fail to explain fully which part of the limitations recite an inventive concept and why.

• Can a business method claim that does not use any machine, e.g., a computer, be subject matter eligible? The Supreme Court and the Federal Circuit have not given any explicit answer to this question. The Abstract Idea Examples also do not shed any light on this issue, as they do not include any examples with such “pure” business method claims.