Patent Invalidity, Patentability

In recent years, it has become increasingly difficult to patent computer-related inventions such as those concerning smart phone and web applications or even more specialized computer programs used in industry.  The US Patent and Trademark Office (USPTO) has been applying the US Supreme Court’s ruling in Alice Corp. v. CLS Bank International, 573 U.S. 208, 134 S. Ct. 2347 (2014) to reject many such inventions as lacking “statutory subject matter” under Section 101 of the Patent Statute. 

Typically, the Patent Office has previously treated claims for many computer-implemented inventions as “abstract concepts” under Alice.  Once a claim is deemed “abstract,” Alice holds that it is ineligible for patent projection unless it also recites an “inventive concept”.  Moreover, Alice holds that the limitation of a claim to computerized implementation of an abstract concept is not sufficient to satisfy the inventive concept test. Examiners would typically recharacterize the claims of computer-implemented inventions at a high level, which allowed them to describe them as being directed to an abstract concept.  The examiners then looked at how new the computer hardware limitations were and deemed the claims lacking in statutory subject matter if those hardware limitations were conventional and well understood.

In January of this year the USPTO issued revised patent eligibility guidelines (“Revised Guidelines”).  The Revised Guidelines may be found here: https://www.federalregister.gov/documents/2019/01/07/2018-28282/2019 revised-patent-subject-matter-eligibility-guidance.  They include two features that should help expand what will be deemed “patent eligible”:

1. “Abstract ideas” are limited to three specifically enumerated categories of invention, namely, mathematical concepts, certain methods of organizing human activity, and mental processes; and

2. Claims that integrate an abstract concept into a “practical application” of the concept are not “directed to” an abstract concept, in which case, the claims are patent eligible regardless of whether they include an “inventive concept”.

Of course if claims are patent eligible, they must still be novel and non-obvious in order to be patented.  The fact that an “inventive concept” is not required for certain claims to be deemed “patent eligible” does not eliminate the non-obviousness requirement of Section 103 of the Patent Statute. It only means that an inventive concept need not be established for the claim to constitute statutory subject matter under Section 101.

One of the key differences between the Revised Guidelines and prior USPTO guidelines is that in determining whether claims that recite an “abstract concept” also recite a “practical application” of that concept, the examiners no longer consider whether the elements of the claim other than the concept are “well-understood, routine, and conventional activity.” They are given weight regardless of how well known they are.  It is still the case that if computer elements are recited at a very high level, the claim may be deemed not to constitute a practical application of the abstract concept.  The Revised Guidelines provide more detail on how to apply the test, and the USPTO website includes a number of specific examples describing how it is to be applied.

Keep in mind that the Revised Guidelines do not have the force of law, and the courts are not bound to follow them.  Time will tell if the courts believe that the Revised Guidelines correctly apply the Alice opinion. In any event, the Revised Guidelines appear to be a welcome development for patent applicants seeking to protect computer-implemented inventions.