Is Your Invention the Kind of Subject Matter on which Patents Are Allowed?

Not all kinds of subject matter can be patented. Rather, only “statutory” subject matter is eligible for patenting.  A patent cannot be obtained on an abstract idea, but only on a “useful process, machine, manufacture, or composition of matter”1 that is described in adequate detail to enable one of ordinary skill in the relevant field to make and use a working embodiment of the invention.2

Much ink has been spent recently by the Supreme Court and other federal courts defining whether and which business methods, medical diagnostic methods and treatments, internet-based inventions, software, apps, and other process-based inventions fit within the category of a “process” that the patent statute makes eligible for patenting.  Since a pair of Supreme Court decisions in 20103 and 20144, business methods have largely been abolished from the scope of patent-eligibility.

While most things in the medical arena are patent-eligible, diagnostic methods involving checking specific genetic markers and comparing them to associated empirical risk levels5, and the tailoring of medical treatment to an individual’s biological characteristics have been held by the Supreme Court to be patent-ineligible as directed to laws of nature.6

With regard to computer-related technologies like website- and internet-based inventions, software, and apps, the fact that an invention is implemented on a computer does not render it patent-eligible.  Roughly speaking, technological solutions to technological problems are more likely patent-eligible, and processes that are less technologically-intensive are more likely to be ineligible.  The best way to get an idea of whether a computer-related process-based invention is patent-eligible is with reference to examples dealt with in recent court cases.  Below is a list of specific inventions recently decided by appellate courts to be patent-eligible or non-eligible:

ELIGIBLE

  • webpage generated by combining elements of a host website with content of a third-party merchant7
  • data storage and retrieval system for a computer memory8
  • system for filtering internet content9
  • automatically animated lip synchronization and facial expression of 3-D characters10
  • collection and processing of network accounting records over a network11
  • graphical user interface for commodities trading platform12
  • inertial tracking system for tracking the motion of an object relative to a moving reference frame13
  • memory system with programmable operational characteristics14

NOT ELIGIBLE

  • method of creating device profile within a digital image processing system15
  • method for distributing copyrighted products over the internet16
  • method of extracting and storing information from hard copy documents17
  • method for price optimization18
  • method for tracking and storing financial information for budgeting; system for customizing webpage content19
  • method for determining product price using organizational hierarchies20
  • method and system for assisting borrower in obtaining a loan21
  • method for conducting wagering game22
  • method for taking, transmitting, and organizing digital images23
  • system and method for real-time performance monitoring of an electric power grid24
  • methods for screening e-mail for unwanted content, routing e-mail messages, and screening viruses on a telephone network25
  • method and system for detecting improper access to patient’s protected health information26
  • method for designing a logic circuit27

For more guidance, you should consult with a skilled patent attorney. If your invention falls in a gray zone, a good patent attorney can draft your application and claim your invention with a theme and focus on a concrete technological improvement or compelling inventive concept to move the needle towards patent-eligibility.

  1. 35 U.S.C. §101.
  2. 35 U.S.C. §112(a).
  3. Bilski v. Kappos, 561 U.S. 593.
  4. Alice Corp. v. CLS Bank, 573 U.S., 134 S.Ct. 2347.
  5. Assoc’n for Molecular Pathology v. Myriad Genetics, 569 U.S., 133 S.Ct. 2107 (2013).
  6. Mayo v. Prometheus, 566 U.S., 132 S.Ct. 1289 (2012).
  7. DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d 1245 (Fed. Cir. 2014).
  8. Enfish, LLC v. Microsoft, 822 F.3d 1327 (Fed. Cir. 2016).
  9. Bascom Global Internet Servs., Inc. v. AT&T Mobility, 827 F.3d 1341 (Fed. Cir. 2016).
  10. McRO, Inc. v. Bandai Namco Games Am., 837 F.3d 1299 (Fed. Cir. 2016).
  11. Amdocs (Israel) Ltd. v. Openet Telecom, 841 F.3d 1288 (Fed. Cir. 2016).
  12. Trading Technologies Int’l v. CQG Inc., No. 16-1616 (Fed. Cir. Jan. 18, 2017).
  13. Thales Visionix v. U.S., No. 15-5150 (Fed. Cir. Mar. 8, 2017).
  14. Visual Memory v. Nvidia Corp., No. 16-2254 (Fed. Cir. Aug. 15, 2017).
  15. Digitech Image Techs., LLC v. Electronics for Imaging, 758 F.3d 1344 (Fed. Cir. 2014).
  16. Ultramercial v. Hulu, 772 F.3d 709 (Fed. Cir. 2014).
  17. Content Extraction & Transmission v. Wells Fargo, 776 F.3d 1343 (Fed. Cir. 2014).
  18. OIP Techs. v. Amazon.com, 788 F.3d 1359 (Fed. Cir. 2015).
  19. Intellectual Ventures I v. Capital One (USA), 792 F.3d 1363 (Fed. Cir. 2015).
  20. Versata Dev. Group v. SAP Am., 793 F.3d 1306 (Fed. Cir. 2015).
  21. Mortgage Grader v. First Choice Loan Servs., 811 F.3d 1314 (Fed. Cir. 2016).
  22. In re Smith, 815 F.3d 816 (Fed. Cir. 2016).
  23. TLI Commc’ns v. AV Automotive, 823 F.3d 607 (Fed. Cir. 2016).
  24. Electric Power Group v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
  25. Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016).
  26. Fair Warning IP v. Iatric Sys., 839 F.3d 1089 (Fed. Cir. 2016).
  27. Synopsys, Inc. v. Mentor Graphics, 839 F.3d 1138 (Fed. Cir. 2016).

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