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In Mayo v. Prometheous 566 U. S. ____ (2012), the Supreme Court said (regarding 35 U.S.C. §101 subject matter eligibility):

a process that focuses upon the use of a natural law [must] also contain other elements or a combination of elements, sometimes referred to as an “inventive concept,” sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself.

This was reiterated in Alice v. CLS Bank 573 U.S. ___ (2014):

a court must first “identif[y] the abstract idea represented in the claim,” and then determine “whether the balance of the claim adds ‘significantly more.’”

What is the standard for judging, as part of assessing subject matter eligibility, whether the claimed process contains "significantly more" such that it is not preempting entirely the use of the natural law (or abstract idea, or other ineligible concept) itself?

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The USPTO has incorporated the test for "significantly more" in their subject matter eligibility test as follows (see step 2B):

enter image description here

(Figure from 2014 Interim Guidance on Subject Matter Eligibility.)

The USPTO says (ibid.):

A claim directed to a judicial exception must be analyzed to determine whether the elements of the claim, considered both individually and as an ordered combination, are sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself.

They say this several different ways:

this has been termed a search for an inventive concept

...

To be patent-eligible, a claim that is directed to a judicial exception must include additional features to ensure that the claim describes a process or product that applies the exception in a meaningful way, such that it is more than a drafting effort designed to monopolize the exception

In section 2.B.1., they give a summary of Supreme Court jurisprudence on this point, listing examples of considerations that have been found relevant for this analysis of "whether a claim with additional elements amounts to significantly more than the judicial exception itself".

Limitations that "may be enough to qualify as significantly more" (ibid.):

  • Improvements to another technology or technical field
  • Improvements to the functioning of the computer itself
  • Applying the judicial exception with, or by use of, a particular machine
  • Effecting a transformation or reduction of a particular article to a different state or thing
  • Adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application
  • Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment

Examples of limitations that are insufficient to qualify as significantly more (ibid.):

  • Adding the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer
  • Simply appending well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception
  • Adding insignificant extrasolution activity to the judicial exception
  • Generally linking the use of the judicial exception to a particular technological environment or field of use
2

Nobody really knows.

(NB: the "you" in this answer is a generic person and not you personally; as always, you should consult a lawyer before relying on random information you found on the internet)

The USPTO's opinion is relevant, if you're just trying to get a patent. But if you want to use it in a court of law, it needs to be acceptable to the judiciary, not the USPTO. And the Supreme Court has been rather vague about this one. Worse, it seems there's a fundamental disconnect between the Supreme Court and the Federal Circuit. Looking at Alice in particular, the Federal Circuit split seven different ways, with no opinion holding a majority. Then the Supreme Court looked at it and unanimously ruled that it was a straightforward application of Mayo. Unfortunately, they thought it was so straightforward that they declined to provide any further guidance. Thus, the Federal Circuit is guessing just as much as we are.

I think Diamond v. Diehr may provide guidance. In that case, the computer was controlling a rubber curing machine, and the patent was on the whole apparatus. That was upheld, and so far as I'm aware, this has not been revisited or seriously questioned. It seems (to me) that satisfying the machine-or-transformation test is a sufficient condition for section 101 patent eligibility. But Bilski made it clear that this is not a necessary condition.

Looking to the other extreme, in Alice and Bilski, we see people taking traditional business methods (such as hedging, escrow, etc.) and applying them on a computer. This is not patentable. But they're not patentable under section 101, not on the basis of prior art or some other reasoning. So this isn't about the age of the business methods. It's about their nature. They are abstract ideas, disconnected from physical matter, and often rather vague so as to cover the entire concept rather than one specific implementation.

Where's the boundary? I would look carefully at patents which relate to physics without directly interacting with physical matter. This would include things such as these:

  • Audio and video codecs
  • CAD software
  • Image manipulation software

I don't know whether any or all of these things are patentable, but I believe they are probably close to the boundary line, one way or another (at least, closer than the extremes discussed above). I should note that the MPEG-LA already holds several patents on image and video codecs (and possibly audio codecs as well, I'm not sure), but I'm not aware of any case which went to trial in which they asserted any of those patents. They have had some public back-and-forth with Google over whether or not the WebM format infringes these patents, so it's possible we'll get an answer in this space.

To maximize the chances of patentability, these patents would need to be highly specific about their design and implementation, as both Alice and Bilski were very critical of vague patents. As a developer, I would consider source code ideal for this, but it's not clear to me that the courts would agree. Even without source code, though, good patents would be wide open to clean-room reverse engineering once they expire. Since copyright lasts much longer than patents in most jurisdictions, this may not be a net win.

  • @nomenagentis: Not really. That section is largely speculation on my part. SCOTUS has given us very little to work with. But I would like to draw your attention to Alice. In oral arguments, the judges kept coming back to the vagueness of the patent. IIRC, they did the same thing in Bilski. Source code would make it significantly more specific, but it's not the only way to do that. – Kevin Jun 14 '15 at 21:42
  • @nomenagentis: Please be more specific. I already said "I don't know whether any or all of these things are patentable." – Kevin Jun 14 '15 at 21:46
  • @nomenagentis: I suppose you're right. Is it any better now? – Kevin Jun 14 '15 at 21:52
  • Better :) although a follow-up... Are you suggesting source code in the claims? – user248 Jun 14 '15 at 22:08
  • Let us continue this discussion in chat. – Kevin Jun 14 '15 at 22:08
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You seem to know as well as anybody. I'll phrase it in one more way: it can't just be "insignificant post-solution activity." (Bilski).

Also note that the Machine-or-Transformation test is still helpful. Bilski only said that it wasn't the only test, and Mayo and CLS Bank are kind of exceptions to the norm -- because the "machine" involved in CLS Bank was pretty much just a pretense for an algorithm.

Generally, I would also say that the more inventive it seems, the nicer courts are going to be to you, and the more it seems like bullshit, the more courts are going to hate you. The PTO tries to follow stricter rules than that, but you get to work with your examiner so he can inform you better than we do.

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