Modern life relies on science and technology: computers, cellphones, smartphones, wireless communications, satellite communications, etc. The amazing developments in science and technology have been attributed, at least in part, to patents.
This was recognized by the Founding Fathers of the United States, who established in the U.S. Constitution that Congress has the power “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries."
From their earliest days, the patent laws passed by Congress have defined the four categories of invention that Congress deemed to be the appropriate subject matter eligible for receiving a patent: processes, machines, manufactures, and compositions of matter.
There are exceptions to such broad categories of invention. One cannot patent abstract ideas (such as a mathematical equation), laws of nature (such as the law of gravity), and natural phenomena (including medicinal plants and other products of nature). However, an application of an abstract idea, law of nature, or natural phenomenon may be eligible subject matter for patent protection. For example, the leaves of a willow tree have chemicals for relieving headaches, and such leaves themselves cannot be patented, but a refinement process for producing aspirin from such willow leaves can be patented.
To determine whether an invention is eligible or not eligible subject matter for receiving a patent, the U.S. Supreme Court laid out a test in Mayo v. Prometheus, 132 S. Ct. 1289 (2012), which was repeated in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014). The first part of the Mayo/Alice test is to determine whether the invention is directed to an abstract idea, a law of nature, or a natural phenomenon. If not, then the invention is eligible for patenting, provided that other legal requirements are met, namely, novelty, non-obviousness, utility, and an adequate written description of the invention are provided.
However, if it is determined that the invention is directed to an abstract idea, a law of nature, or a natural phenomenon, the second part of the Mayo/Alice test is performed to determine whether the invention has additional elements that amount to "significantly more" than an abstract idea, a law of nature, or a natural phenomenon. The Supreme Court has described the second part of the test as the "search for an 'inventive concept'."
Lacking "significantly more" or lacking an "inventive concept" which goes beyond an abstract idea, a law of nature, or a natural phenomenon, an invention is ineligible for a patent. However, if one finds that there is "significantly more" or an "inventive concept" to the invention, then the invention is eligible for patenting, provided that the other legal requirements are met, namely, novelty, non-obviousness, utility, and an adequate written description of the invention are provided.
Following the court decisions in Mayo and Alice, the two-part Mayo/Alice test has been used extensively to determine the patent-eligibility and ineligibility of inventions involving various technologies.
For example, the Federal courts have held that fundamental economic practices such as hedging financial risks or mitigating settlement risks are ineligible for patent protection. In addition, certain methods of organizing human activity such as processing loan information, classifying and storing digital images in an organized manner, filtering content using a computer, computer virus screening, and even generating menus on a computer are ineligible for patent protection.
Also, the mere use of a basic computer does not render an abstract idea patent-eligible, since a basic computer does not convey "substantially more" than the abstract idea.
So what technologies are eligible for patent protection? The courts have determined that, for example, matching a website's "look and feel" is not an abstract idea, nor is the use of rules for lip synching and facial expressions of animations, and so such inventions are patent-eligible.
On the other hand, some abstract ideas have been accompanied by "substantially more" elements in reciting an "inventive concept", such as tomographic scanning, digital image processing, use of GPS, and use a mathematical equation to control rubber manufacturing machine. Such abstract ideas with "substantially more" elements have been considered patent-eligible.
The determination of patent-eligibility for a given technology has been on a case-by-case basis. However, one common feature is that the use of computers does not automatically convey patent-eligibility. The technology being evaluated must rely on more than just computers, but instead should advance computer technology in a significant and inventive manner in order to merit the eligibility to obtain a patent.
Written by Anthony J. Natoli. Please note that the above discussion is for general information purposes only. For more information, please contact John H. Choi & Associates LLC at email@jchoilaw.com or 201.580.6600.