U.S. law defines the types of subject matter that may be eligible for patent protection:
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.
35 U.S.C. Section 101 (Bold added). Thus, U.S. law limits patent-eligible subject matter to processes, machines, manufactures, and compositions of matter, which are discussed in Parts 1 and 2 of this series. But under judicial decisions, there are further limitations. Patent protection is not available to abstract ideas, laws of nature, or natural phenomena. This paper discusses “abstract ideas.”
In Alice Corp. v. CLS Bank Int’l, (“Alice”) the U.S. Supreme Court set forth a two-part test related to abstract ideas: 1) Whether the patent claims are drawn to an abstract idea; and 2) If so, whether the patent claims nevertheless recite something more than the abstract idea. So what is an abstract idea? There is no clear definition of what an abstract idea is. Federal court cases have struggled to develop a coherent view of abstract ideas. However, the U.S. Patent Office has, for purposes of its patent examiners and other officials, identified three categories of abstract ideas:
- 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).
2019 Revised Patent Subject Matter Eligibility Guidance at 84 Federal Register 52 (Bold added). Thus, under the above, abstract ideas include: 1) mathematical concepts, 2) certain methods of organizing human activity, such as fundamental economic practices, and 3) mental processes. The above categories are, well, abstract. So a few example U.S. Supreme Court rulings are reviewed to provide a flavor – a detailed discussion is beyond the scope of this article. Besides discussing the issue of whether an abstract idea is recited, we also address whether the Court found that the claims recited something significantly more.
Regarding mathematical concepts, in Gottschalk v. Benson, (1972) the U.S. Supreme Court held that claims directed at an algorithm for converting binary-coded decimal numerals into pure binary form. The Court found that, “The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that, if the judgment below is affirmed, the patent would wholly preempt the mathematical formula and, in practical effect, would be a patent of the algorithm itself.” The subject matter of the patent was found to be patent ineligible subject matter.
Another mathematical formula case was Diamond v. Diehr, (1981) in which the U.S. Supreme Court found that the patent applicant was not attempting to patent a mathematical formula, as in Benson. Instead, the patent applicant was claiming a method of using the mathematical formula as part of a process to solve an industry problem. That is, to provide an improved method for using frequent accurate temperature measurements together with the formula to compute a highly accurate rubber curing time. The claims were found patent-eligible. This shows that it is possible to obtain a patent on a process using a mathematical formula but that it helps to incorporate the formula into a solution to solve technological problems.
Regarding “methods of organizing human activity,” this is a category frequently used by Examiners to reject patent applications under Section 101 because it is such a broad category with a number of subcategories. One of the subcategories is “fundamental economic practices.” The Alice decision found that the claims were directed to using a computer as a middle person to reduce financial risk in a settlement. This was found to be an abstract idea, in particular, a fundamental economic practice. Moreover, the Court found that the claims did not recite significantly more than the abstract idea. For example, the claims did not involve an improvement in the functioning of the computer itself.
The final category in the USPTO Guidance is “mental processes.” This refers to processes that are capable of being performed in the human mind. For example, in Benson, the Court found that “The conversion of BCD numerals to pure binary numerals can be done mentally through use of the foregoing table. The method sought to be patented varies the ordinary arithmetic steps a human would use by changing the order of the steps, changing the symbolism for writing the multiplier used in some steps, and by taking subtotals after each successive operation.” To avoid having a claim regarded as reciting a mental process, it is sometimes helpful for the claim to recite something that is incompatible with a process being performed in the human mind. A detailed discussion of this is being the scope of this article.
Thus the above provides a flavor of the three categories of abstract ideas recognized by the 2019 USPTO Revised Guidance: mathematical concepts, methods of organizing human activity, and mental processes. The above is just an introduction. Later articles will discuss how the USPTO examines patents regarding each of the above three categories and providing tips for overcoming USPTO rejections based on each of these categories.