Introduction to this Section 101 (Patentable Subject Matter Eligibility) Index
Section 101 of the U.S. Patent Act states that a patent may be obtained for new and useful processes, machines, manufactures, and compositions of matter. In spite of the broad wording of this section, the Supreme Court has, for many years, held that there are exceptions to subject matter eligibility that are not set forth in that statute. These non-statutory exceptions include natural laws, natural phenomena, and abstract ideas. While patents may not be granted on these exceptions, patents may be granted to novel processes and structures that are based upon these exceptions. The problem is that every invention relies upon natural phenomena, as no mechanical invention could function without the laws of physics, and no medical process or pharmaceutical could function without the underlying biology that allow those methods and drugs to improve human health. One cannot patent the laws of physics or the underlying biology, even if the person applying for the patent discovered this new science. A Nobel Prize may be awarded for such a discovery, but not a patent. Patents can only be awarded on new applications of science, not on the science itself.
Similarly, almost every invention can be describe in an abstract manner. In other words, it is almost always possible to identify an abstract idea that lies behind every patentable idea. Even though one may not obtain a patent on the abstract idea itself, one can get a patent on a particular application of that abstract idea.
While these distinctions are understandable, it can be very difficult to distinguish between a patent claim that is attempting to cover an abstract idea or a natural phenomenon (which is not eligible for patent protection), and a patent claim that is attempting to cover a patentable application of that same idea or phenomenon. The Supreme Court’s decisions in Mayo and Alice laid out a test for making this determination. In the ideal world, application of this Alice/Mayo test (often referred to within BitLaw as just the Alice test) should allow one to determine when a claim should be rejected for being directed to the statutory exception, and when the claim should be granted as being directed to a patent-eligible application of that exception. This test is described in some detail in our Section 101 Guidance. Unfortunately, the test is very amorphous, which means that it is difficult to apply and can lead to seemingly contradictory results in the court cases that apply the test.
This index attempts to collect all the source materials and analysis that one should need to apply the Alice test. Readers are encouraged to read through the summary of the MPEP sections. These sections of the MPEP were revised in June of 2020 and set forth the US Patent Office's best understanding of how to apply the Alice test. Of course, the MPEP is written for patent examiners and not patent applicants, and therefore does not provide many suggestions as to how to convince the patent office to allow a patent claim once it has been subject to a Section 101 rejection. That is why we have created a comprehensive Guidance Section dealing with Section 101, which is outlined below. In this Guidance, we focus in on the test that Supreme Court and Federal Circuit have set forth (which should be the test used by the PTO, but frequently is not).
This test requires comparing the fact situation being analyzed to other court decisions that have applied the test. Finding the best, most analogous case, is therefore an important part of applying the Alice test. The Section 101 Case Law Index therefore presents most of the precedential opinions of the Federal Circuit and the Supreme Court that have applied the Alice test. The cases are provided in a searchable, sortable table, allowing users to quickly focus in on the most relevant cases that have reached a desired conclusion. Finally, the US Patent Office has created examples to help explain to examiners how the Alice test should be applied. These tests have been separated and presented below for easier searching and application when generated arguments during patent prosecution in front of the Patent Office.
BitLaw Guidance on Section 101
The Patent Guidance section of BitLaw includes pratical information on handling Section 101 issues. This guidance should prove useful whether you are prosecuting a patent application with the U.S. Patent and Trademark Office, or you are either attacking or defending a patent's validity in front of the Patent Trial and Appeal Board (PTAB), a federal district court, or the U.S. Court of Appeals for the Federal Circuit. The Guidance is divided into the following four pages:
- What is a Section 101 Rejection
- This page provides a basic overview of the subject matter eligibility requirement (Section 101) and how it is currently being applied by the federal courts. In particular, this page discusses the following topics:
- Section 101 and the Subject Matter Eligibility Requirement,
- The four statutory categories under Section 101,
- The non-statutory exceptions (abstract ideas and natural phenomena),
- Overview of the Alice test for analyzing non-statutory exceptions, and
- Alice test applies to both abstract ideas and natural phenomenon.
- Applying Step One of the Alice test
- Here step one of the Alice test is discussed in detail in light of the relevant Federal Circuit decisions. This page discusses:
- Overview of Step One:
- Claims must be "directed to,"and not just "be based on" ineligible concept,
- Comparison of Step One is between character of the claim and ineligible concept,
- Role of novelty and prior art in step one, and
- Role of Preemption;
- Applying step one in the context of abstract ideas:
- Identifying the abstract idea without any definitions,
- Supplemental tests for step one:
- Improving computers vs. using computers as a tool,
- Claiming particular solution vs. claiming outcome, and
- Data collection, analysis, and results; and
- Applying step one in the context of natural phenomena:
- Identifying the law of nature/natural phenomena,
- Markedly different characteristics test for products of nature, and
- Natural phenomena process claims,
- Applying Step Two of the Alice test
- In this Guidance, step two of the Alice test and the relevant case law is considered in detail. The topics covered include:
- Overview of step two of the Alice test:
- Necessary only if invention does not pass step one, and
- Requirement for an "Inventive Concept";
- What is Enough for an Inventive Concept:
- Not Enough: Mere instructions to apply (generic computer or high degree of generality),
- Not Enough: Insignificant, extra-solution activity,
- Not Enough: Field of use restriction or technological environment, and
- Enough: Improving the computer or other technology; and
- Well-understood, routine, and conventional claim elements:
- Well-understood, routine, conventional activity is not inventive concept,
- Must consider ordered combination of claim elements,
- Question of fact--Requires a factual determination on conventionality,
- Prior art search is not needed, and
- Not same as Section 103--Can be inventive concept even if obvious under section 103;
- Machine-or-transformation test; and
- Where may one look to find the inventive concept?.
- How to argue against a Section 101 Rejection
- The insight from the previous three Guidance pages are brought together in this discussion about hot to best address Section 101 issues. In this case, the analysis is focused on defending a patent or patent application against an allegation that the invention is non-statutory subject matter. The topics covered include:
- Claims outside one of the four statutory classes :
- Explain how the claim falls within one of the classes, and
- Amend claims to fall within one of the classes;
- Proving eligibility under step one of Alice test:
- Explain how examiner failed to properly apply step one of the test,
- Redefine the "claimed concept" using proper test,
- Argue closest analogy to case that allowed claim under step one,
- Argue claims do not merely gather, analyze, and output data,
- Argue claims recite particular solution as oppose to claiming an outcome, and
- Should you argue preemption?;
- Step one under the markedly different characteristics test;
- Proving Eligibility under step two of alice test:
- Explain how examiner failed to properly apply step two of the test,
- Identify elements where inventive concept can be found,
- Argue that claim elements are not well-understood, routine, and conventional,
- Argue additional claim elements improve computers or technology,
- Refute characterizations that claim elements can't qualify as inventive concepts, and
- Argue that the claims pass the machine-or-transformation test.
Statutes and Regulations
- Section 101 of the U.S. Patent Act
- No regulations govern subject matter eligibility
Important Case Law Concerning Section 101
Bitlaw now provides a separate Section 101 Cases page to index and summarize recent subject matter eligibility decisions. The following index is provided here only for quick access to the most important cases.
- O'Reilly v. Morse (S. Ct. 1853)
- While other claims of Samuel Morse for his telegraph invention were affirmed as valid, the Supreme Court decided that a claim that covered the use of "electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances" was ineligible for patent protection. Many scholars have argued that the case stands for the fact that this invention was not described sufficiently so as to cover all means of transmitting characters using electro-magnetism. Others have stated that this was a subject matter eligibility case in the nature of Mayo and Alice.
- Gottschalk v. Benson (S. Ct. 1972)
- The Supreme Court decided that a patent on an algorithm to convert binary-coded decimal numbers into true binary numbers would pre-empt the entire mathematical algorithm. Since mathematics could be considered an abstract idea, and abstract ideas are not patentable, the Supreme Court held that the algorithm in question is not patentable.
- Parker v. Flook (S. Ct. 1978)
- Here, the Supreme Court determined that a method for updating an alarm limit (used to signal abnormal conditions) in a catalytic conversion process was unpatentable. Since the only difference between the prior art and the invention was the algorithm the invention was not patentable because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention."
- Diamond v. Chakrabarty, 447 US 303 (1980
- A new bacterium with markedly different characteristics from any found in nature was found to be patentable. The Supreme Court emphasized that here, the invention was not nature's handiwork, but the handiwork of the inventor.
- Diamond v. Diehr (S. Ct. 1981)
- In this 1981 case, the U.S. Supreme Court found an invention to be patentable even though computer software was utilized. The invention utilizes a computer to calculate and control the heating times during a rubber curing process. In this case, the invention was not merely a mathematical algorithm, but was a process for molding rubber, and hence was patentable. This was true even though the only "novel" feature of this invention was the timing process controlled by the computer.
Primary Supreme Court Cases Guiding Current Section 101 Analysis
- Bilski v. Kappos (S. Ct. 2010)
- The Supreme court rejected the machine-or-transformation test is the sole test to determine whether a process constitutes patent-eligible subject mater. The invention at issue was not patent-eligible subject matter because it was an attempt to preempt an abstract idea.
- Mayo Collaborative Services v. Prometheus Laboratories, Inc. (S. Ct. 2012)
- The Supreme Court determined that a medical testing patent was unpatentable as nonstatutory subject matter. To be patent eligible, claims of this type must contain additional elements beyond the natural law that are not well-understood, routine, and conventional.
- Association for Molecular Pathology v. Myriad Genetics, Inc. (S. Ct. 2013)
- The Court found that isolating gene fragments did not result in the invention of anything that was not found in nature and was not patent eligible. In contrast, the creation of cDNA sequences from mRNA results in a non-naturally occurring molecule, and is patent eligible subject matter.
- Alice Corp. v. CLS Bank Int'l (S. Ct. 2014)
- The Supreme Court set forth a two-part test for analyzing Section 101 issues. First, determine if is "directed to" an abstract idea or other statutory exception. If so, the claim is not patent eligible unless it contains an "inventive concept" outside the statutory exception.
Patent and Trademark Office Documents
Set forth below are various "guidance" documents created by the USPTO to analyze patent applications with respect to Section 101. Most of this guidance has now been incorporated into the MPEP. As a result, the MPEP Sections should be considered to supercede much of the guidance described below.
- Current Guidance
- Guidance that pre-dates the current MPEP
- USPTO Subject Matter Eligibility webpage
- Interim Guidance
- Case Specific Guidance (Guidance provided after a particular case)
- Quick Reference Sheets
- PTO Examples
The patent and trademark office has provided a total of 46 examples that can be used to understand how the Section 101 Guidance is to be applied in particular fact situations. These examples have been separated from their original source PDF documents, and are indexed in a separate page containing the PTO's Section 101 examples.