21 Feb 2021
Recently it’s become more difficult to obtain US patent protection for technologies related to software and computer systems.
As explained my prior post, the US Supreme Court’s Alice decision significantly broadened the range of inventions that are considered “abstract ideas” that are not eligible for patent protection, and this led to a dramatic increase in the number of so-called “Alice rejections” in US patent applications for software and computer-implemented inventions.
In this follow-up post, I’ll walk through the US Patent and Trademark Office’s test for determining whether a claim is patent-eligible under the Alice framework. Along the way, I’ll point out how certain types of software and computer-implemented inventions can pass the test through “escape hatches” built into the Alice framework.
The Patent Office’s “Two-Step” Test for Patent Eligibility (Which Has Four Steps)
The US patent office’s current approach to patent eligibility was first laid out in their 2019 guidance, which was based on the Alice decision and other Supreme Court and Federal Circuit opinions on patent eligibility. That guidance has now been integrated into the USPTO’s Manual of Patent Examining Procedure (MPEP) at Section 2106.
The “Alice framework” is the process that US patent examiners use to decide whether a patent claim should be rejected as a “judicial exception” to Section 101. There are three types of judicial exceptions — laws of nature, natural phenomena and abstract ideas.
Most of this post describes the Alice framework with respect to abstract ideas (as opposed to laws of nature and natural phenomena), because abstract ideas are most relevant for software and computer-implemented inventions.
The Alice framework, as summarized by this flow chart from the MPEP, is usually described as a “two step” process. But that’s a misnomer—a quick glance at the flow chart reveals that Step 2 is actually two steps (“Step 2A” and “Step 2B”). And when you read the description, you find that Step 2A is actually two steps (“Prong One” and “Prong Two”).
So really there are four steps in the “two step” process.
Here’s a snapshot of the Alice framework, followed by a deeper dive into Steps 2A and 2B for software and computer-implemented inventions.
Overview of the Alice Framework
Step 1 (Statutory Categories): Is the claim to a process, machine, manufacture or composition of matter?
- If not, the claim fails the test; it’s not patent-eligible (it’s not a valid claim under Section 101).
- If so, go to Step 2A.
Step 2A (Judicial Exceptions): Is the claim directed to a law of nature, a natural phenomenon, or an abstract idea? (This “step” is actually a “two-prong inquiry”.)
- If not, the claim passes the test; it is patent-eligible (it is a valid claim under Section 101).
- If so, go to Step 2B.
Step 2B (Inventive Concept): Does the claim recite additional elements that amount to significantly more than the judicial exception?
- If not, the claim fails the test; it’s not patent-eligible (it’s not a valid claim under Section 101).
- If so, the claim passes the test; it is patent-eligible (it is a valid claim under Section 101).
If it’s the first time you’ve seen this, the process might sound very logical and clear. But when patent professionals (attorneys, judges, and examiners) apply this process to an actual patent claim, they get very inconsistent (and sometimes non-sensical) results, as described in my last post.
Step 1 isn’t the problem. If the claim recites a “method”, a “process”, a “system”, a “device”, an “apparatus”, a “computer-readable medium” or something similar to that, you may happily proceed to Steps 2A and 2B. That’s where things can get difficult.
In the context of software and computer-implemented inventions, the problem is determining whether the claim is “directed to an abstract idea” (at Step 2A), and if so, whether the additional elements in the claim “amount to significantly more” than the abstract idea (at Step 2B). Those two issues are the heart of confusion and controversy surrounding the Alice decision and the framework that came out of it.
The rest of this post digs into Steps 2A and 2B applied to abstract ideas in the context of software and computer-implemented inventions. Along the way, I’ll point out “escape hatches,” which represent strategies that you can use to exit the Alice framework with a patent-eligible claim.
In other words, the escape hatches are ways that you can avoid (or overcome) abstract idea rejections in US patent applications.
Is the Claim Directed To an Abstract Idea?
When you get to Step 2A in the Alice framework, the question is whether the claim is directed to an abstract idea. The Alice decision doesn’t tell us what an abstract idea is, but the US patent office’s 2019 guidance did provide some clarity on that. In fact, one of the most helpful components of the US patent office’s 2019 guidance was to identify three general categories (which they call “enumerated groupings”) of abstract ideas from case law:
- 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).
So at Step 2A, you have to determine whether your claim is “directed to” one of these three types of abstract ideas. As noted earlier, Step 2A answers this question with two a “prong” inquiry:
- Prong One: Does the claim set forth or describe an abstract idea?
- Prong Two: Does the claim as a whole integrate the abstract idea into a practical application?
Our First Escape Hatch
The important thing to know here is that you can very often escape the entire Alice framework at Prong One. If your claim doesn’t recite a mathematical concept, a method of organizing human activity, or a mental process (one of the three types of abstract ideas identified in the patent office guidance), then your claim passes the test and should not be rejected as an ineligible abstract idea.
So avoiding the three “enumerated groupings” of abstract ideas in the US patent office’s guidance is our first escape hatch, where we pass the test and exit the Alice framework.
But sometimes, to accurately claim an invention, you need to recite an abstract idea in the claim. For example, many of the inventors we work with are physicists and mathematicians, and so we often draft patent applications that involve mathematical relationships and calculations. In that scenario, the first escape hatch often isn’t available.
But the fact that a claim recites or sets forth an abstract idea doesn’t necessarily mean that the claim is “directed to” the abstract idea. So you don’t fail the test at Prong One; instead, you continue to Prong Two.
Three More Escape Hatches
At Prong Two (still in Step 2A), the claim is not “directed to” the abstract idea if the claim integrates the abstract idea into a practical application. In other words, you can still escape the Alice framework by integrating a mathematical formula (or another abstract idea) into a practical application.
What does that mean?
Well, there’s not a bright line rule for whether an abstract idea has been integrated into a practical application. Generally, the claim should apply or use the abstract idea in some meaningful way beyond generally linking the abstract idea to a particular technological environment.
The MPEP also provide some useful examples. The following are examples of claim limitations that can, in the context of a software or computer invention, integrate an abstract idea into a practical application:
- Providing an improvement in the functioning of a computer or other technology;
- Implementing the abstract idea in conjunction with a particular machine or manufacture that is integral to the claim; and
- Effecting a transformation or reduction of a particular article to a different state or thing.
The important point here is that each of these three examples provides yet another chance to escape the Alice framework with a patent-eligible claim. In other words, here we have three more escape hatches, where we pass the test and exit the Alice framework.
If your claim describes a system or process that has any one of these three attributes, then your claim is not “directed to” an abstract idea. For example, if your claim describes an invention that provides an improvement in the functioning of a computer (or another technology), then your claim satisfies the criteria of Step 2A (under Prong 2) and your claim should not be rejected as an ineligible abstract idea.
On the other hand, the MPEP also provides examples of claim limitations that do NOT integrate an abstract idea into a practical application. In the Alice framework, these types of things are worthless add-ons that don’t buy you anything:
- Merely reciting the words “apply it” (or an equivalent) with the abstract idea;
- Merely including instructions to implement the abstract idea on a computer, or merely using a computer to perform the abstract idea;
- Adding insignificant extra-solution activity to the abstract idea; and
- Generally linking the abstract idea to a particular technological environment or field of use.
Examiners often support their “abstract idea” rejections by dismissing claim elements under these categories. That’s because these four “add-ons” in a claim don’t provide enough substance to integrate the abstract idea into a practical application.
Therefore, if your claim describes a system or process that has nothing more than an abstract idea coupled with one of these four worthless add-ons, then your claim is “directed to” the abstract idea. In that case, you’re still in the Alice framework, and you move on to Step 2B.
What Amounts to Significantly More than an Abstract Idea?
At Step 2B, the question is: Does the claim recite additional elements that amount to significantly more than the abstract idea?
To answer this question, the “additional elements” in the claim (i.e., the elements that are not the abstract idea) are analyzed to determine whether they define an “inventive concept.” But the “inventive concept” here (in the context of patent eligibility under Section 101) is not related to whether the claim is sufficiently innovative or technologically significant to merit patent protection. Those questions (“novelty” and “non-obviousness”) are dealt with under Sections 102 and 103 of the patent statute.
Instead, oddly enough, the “inventive concept” analysis at Step 2B (for determining whether the additional elements of the claim amount to significantly more) looks a lot like the analysis at Step 2A (for determining whether the claim integrates the abstract idea into a practical application), which is summarized above.
The Federal Circuit and the patent office have both acknowledged that Steps 2A and 2B strongly overlap. For example, the MPEP states: “Although the conclusion of whether a claim is eligible at Step 2B requires that all relevant considerations be evaluated, most of these considerations were already evaluated in Step 2A Prong Two.”
Steps 2A and 2B are certainly not identical. For example, at Step 2B, the examiner may determine that the additional elements in your claim define only “well-understood, routine, conventional activity,” which is not considered at Step 2A. However, the patent office has set a high standard for this inquiry, and there are good strategies for overcoming a rejection that relies on an examiner’s assertion that claim elements are well-understood, routine, conventional activity.
As a practical matter, the types of claim limitations that can make a claim patent eligible under Prong 2 of Step 2A (summarized above) can also be leveraged for patent eligibility in Step 2B. So Step 2B provides another opportunity to escape the Alice framework using similar strategies as in Step 2A. Think of them as back doors to the three escape hatches under Prong 2.
At the end of Step 2B, if the additional elements in the claim amount to significantly more than the abstract idea, then claim passes the test and should not be rejected as an ineligible abstract idea.
Otherwise, it’s game over. That is to say, if the additional elements in your claim don’t amount to an “inventive concept” that is significantly more than the abstract idea, then your claim is not patent eligible under Section 101, and your patent application will be rejected.
To patent inventions related to software and computer systems, it’s important to understand how to navigate the Alice framework. The four “escape hatches” described above can be used as primary strategies for developing patent applications that will withstand patent office scrutiny and help you avoid (or overcome) so-called “Alice rejections”.
If you’re a tech company and you have questions about whether your technology will be considered patent eligible by the US patent office, please get in touch!
Michael K. Henry, Ph.D.
Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.