Introduction to Section 101 and Patentable Subject Matter Eligibility
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 Supreme Court’s decisions in Mayo and Alice laid out a test for determining when a claim that incorporates an exception to subject matter eligibility 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.
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.
Primary 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.
Recent Cases that Interpret Bilski, Mayo, and Alice Corp.
- DDR Holdings, LLC v. Hotels.com (Fed. Cir. 2014)
The Federal Circuit finds a software-related invention to be patent eligible.
- ENFISH, LLC v.
Microsoft Corporation (Fed. Cir. 2016)
The Federal Circuit considers a computer-implemented invention to be patent eligible subject matter under Alice. The Enfish decision requires that, under the first step of the Alice test, the claims be considered as a whole, and that the "focus" or "character" of the claim be examined to determined whether a claim is "directed to" an abstract idea.
- Bascom Global Internet Services, Inc. v. AT&T Mobility LLC
(Fed. Cir. 2016)
The Federal Circuit takes a new approach in analyzing step two of the Alice test, explaining that "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces."
- Electric Power Group, LLC v. Alstom SA (Fed. Cir. 2016)
Even when applying the Enfish decision, the Federal Circuit found that a claim directed to collecting and analyzing data to be ineligible for patent protection.
- McRO, INC. v. Bandai Namco Games America Inc. (Fed. Cir. 2016)
The court in McRO analyzed the claims "as a whole" under Enfish and found claims directed toward rules that set parameters for a digital animation software process were patent eligible.
Patent and Trademark Office Documents
- USPTO Subject Matter Eligibility webpage
- Interim Guidance
- Case Specific Guidance (Guidance provided after a particular case that has not be included in the Interim Guidance materials)
- Quick Reference Sheets
The patent and trademark office has provided a total of 27 examples that can be used to understand how the Section 101 Guidance is to be applied in particular fact situations. Because these examples are hard to find and use, they have been separated from their original source document and placed into separate pages in BitLaw. The following table identifies these 27 different examples. The five columns in this table identify to following information: the example number and subject matter for the example; the relevant court case upon which the analyzed claims are based; the relevant exception (abstract idea, product of nature, or none); whether or not the example found the claims to be patent eligible, and a summary of the analysis found in each example. This is a dynamic table, which can be sorted by clicking on column headers, or filtered by entering text into the search box.
|Example||Relevant Case||Step 2A: Exception||Eligible?||Notes|
Removing Malicious Code From Email Messages
|None (not an abstract idea)||Yes||Computer readable medium is an article of manufacture. Software code on the medium that removes computer virus "inextricably tied to computer technology," and therefore not abstract|
Composite Web Page (DDR Holdings)
|DDR Holdings||None (not an abstract idea)||Yes||Claim is not abstract because it does not merely recite performance of some business practice known from the pre-Internet world, but is instead necessarily rooted in computer technology to overcome a problem arising in the realm of computer networks . Since this is not abstract, no need to analyze inventive concept.|
Halftoning--Digital Image Processing
|Research Corp. Technologies||Abstract Idea (Math)||Yes||Claims use mathematical operation to generate a mask, and therefore is directed toward an abstract idea. But the mask is used to convert a binary image array into a halftoned image in a way that uses less memory and faster computation time without sacrificing quality. These are improvements in the technology of digital image processing. Also explains that steps do more than retrieve (gather) and combine data using a computer.|
Global Positioning System in Mobile Device
|SiRF Technology||Abstract Idea (Math)||Yes||Claims recite mathematical operations and therefore are directed to an abstract idea. Use of CPU, memory, and clock are insufficient to save claim. However, claim is limited to mobile device with GPS receiver, wireless transceiver, and display. This, plus improvement to existing technology (global positioning) make claim eligible.|
Generating device profile for a scanner (Digitech)
|Digiteh Image Tech||Abstract Idea (Math)||No||Claim only generates data using mathematical techniques (so is directed toward an abstract idea), and then combines data into a "profile." Without any additional elements beyond idea of gathering and combining data, claim is ineligible.|
Game of Bingo (Planet Bingo)
|Planet Bingo||Abstract Idea (Organizing Human Activity)||No||Managing Bingo game can be performed mentally and is therefore similar to the organizing of human activity of Alice. Additional generic computer components perform basic functions so there is no inventive concept.|
E‐Commerce With Transaction Performance Guaranty (buySAFE)
|buySAFE||Abstract Idea (Fundemental Economic Practices)||No||Invention is to guaranty the performance of a transaction over a computer program and therefore creates a contractual relationship similar to economic practices of Bilski. Rest of claim is only generic computer and computer network performing basic functions.|
Display Ads in Exchange for Viewing Desired Material (Ultramercial)
|Ultramercial||Abstract Idea (Fundemental Economic Practices)||No||Claims use ads "as an exchange or currency" and relate to commercial practices that the courts have found to be abstract. The details (11 steps) in the claim further describe the abstract idea, but do not make it less abstract. Additional limitations are data gathering or other pre-solution activity or limitations to a particular technological environment.|
Gunpowder & Fireworks
|None (Product of Nature)||Yes||Claim is to gunpowder--a mixture of three naturally occurring substances, but there are no naturally occurring counterparts to the combination. The explosive property of the mixture has a markedly different characteristic of the non-explosive quality of the components, therefore claim is not directed toward product of nature. Claim to fireword including cardboard body is clearly not directed to nature-based products, and it is not necessary to apply the markedly different analysis.|
|Product of Nature and None||No and Yes||Claim to simply providing a known fruit is no different than a claim to the fruit--there is no difference in characteristics between fruit provided in claim and fruit from tree. This claim is ineligible. However, a claim to a beverage of fruit juice and an effective amount of added preservative creates a beverage that spoils more slowly and is markedly different from the juice in nature. This claim is not directed to a product of nature.|
Amazonic Acid, Pharm. Compositions, & Methods of Treatment
|Product of Nature and None||No and Yes||Claim to chemical purified from leaves of a tree, two derivatives (one is functionally different from chemical in nature), and use of chemical to treat disease. Claim to purified version of chemical is not eligibile as it has no characteristics that are markedly different. This is a product of nature, and no additional claim elements provide inventive concept. Both derivatives are eligible as they are at least structurally different from chemical in nature and are therefore not directed toward a product of nature. In addition, compositions with different characteristics are also eligible. Finally, use of purified chemical to treat particular medical conditions is not directed to an exception.|
|Product of Nature and None||No and Yes||Antibiotic protein is found in nature. Processes are discovered that yield the same protein (claim to protein alone is ineligible as product of nature.). Process creates puriified version of protein with different characteristics than natural protein (claims to purified protein eligible--different characteristics than natural protein). Proteins in forms not found in nature are also patentable because of a marked difference.|
Genetically Modified Bacterium
|Chakrabarty||Product of Nature and None||No and Yes||One claim was to a plasmit that might exist in a bacterium to decrade a hydrocarbon. Because the claim covers plamid that is no different than that occurring in nature, the product of nature exception applies, and there are no additional features in the claim. This claim is ineligible. The claim to a bacterium that has plasmids that degrade two different hydrocarbons is eligible--nature has no such bacterium so the claim is to something with markedly different characteristics.|
|Funk Brothers||Product of Nature and None||No and Yes||Claim to mixture of a plurality of non-inhibitive (but otherwise unidentified) species of Rhizobium bacteria is not eligible as the specification did not indicate that the mixture has any markedly different characteristics from what occurs in nature (as in Funk Brothers). A mixture of two identified Rhizobium bacteria that the specification has identified as changing the biological function of one bacteria is eligible as the biological difference "rises to the level of a marked difference."|
|Product of Nature and None||No and Yes||Claims are to an "isolated nucleic acid." Claim only to a sequence (severed to isolate from chromosome) is not eligible under Myeria--not different enough to be markedly different. When sequence has been modified so it is different than that in nature, it is eligible as markedly different.|
|Product of Nature and None||No and Yes||Antibody to a protein on a bacteria is found in animals but not humans. A claim to the antibody alone is the same as found in nature, and is ineligible as a product of nature. A claim to the "human antibody" is eligible, as no human antibodies are naturally occurring. Also antibodies that are structurally different than natural antibodies are eligible.|
|Product of Nature and None||No and Yes||Specification describes growing human pacemaker cell through stem cells. A claim to an isoloated human pacemaker cell is ineligible because in encompasses naturally occurring cells (product of nature). Same is true to claim of cells in a container (container is well-understood and conventional and does not add an inventive concept). Some cells express a protein market that is not found in nature. Claims relating to these cells are eligible (markedly different).|
|Product of Nature and None||No and Yes||Invention is use of two different bacteria to produce goat milk yoghurt. Use of both bateria creates better yoghurt (faster fermentation, less fat, better flavor). A claim merely to the two bateria (standing alone) as a "kit" is ineligible, as each bacteria standing alone has no markedly different characteristics than they did in nature. A claim to the mixture of the two bacteria and goats milk is eligible, because of the markedly different differences.|
|Product of Nature
|Yes||A hip prosthesis that has a surface coataed with a naturally occurring mineral recites the mineral, but clearlydoes not seek to tie up the mineral. This claim qualifies as eligible without full analysis (using the streamlined analysis).|
Robotic Arm Assembly
|Abstract Idea (Math)
|Yes||A claim to a robotic arm assembly that can adjust velocity (a mathematical relationship between position and time) recites math, but clearlydoes not seek to tie up this mathematical relationship and qualifies as eligible without full analysis (using the streamlined analysis).|
Transmission Of Stock Quote Data
|Simpleair CBM||Abstract Idea (mental steps, idea of itself)||No and Yes||Claim to a server that receives stock quote data, filters data, formats data into an alert, and transmits the alert is not eligible as an abstract idea. These steps can be performed mentally (PTO calls it an "idea of itself" without explanation). Extra claim elements are generic computer components performing generic functions or the Internet, which are not enough (or field of use limitations). Second claim adds actions that occur at subscriber computer where alert activates an app that connects to a data source identified in the alert. This second claim is still directed to abstract idea, but hte claim as a whole now amounts to significantly more than organizing and comparing data. This is an Internet-centric problemlike that in DDR Holdings.|
Graphical User Interface For Meal Planning
|Dietgoal Innovations||Abstract Idea (Mental Steps)||No||Claim was to a a user interface, a database, and a "meal builder" which caused meals to be displayed on the user interface. Meal planning is a mental process of managing behavior, and as such is abstract (compared to SmartGene and Cybersource). As database and interface provide only basic computer functions, the claim does not amount to significantly more than the abstract idea.|
Graphical User Interface For Relocating Obscured Textual Information
|Abstract Idea (Math) and None||Yes and No||Invention related to automatically re-formatting obscured windows on a computer's user interface. Claims that only calculated window areas and a scaling factor are directed toward abstract ideas (math) and have no limitations beyond the math. Method that relocates text when obscured without defining the math are not directed toward an abstract idea at all--necessarily rooted in computer technology. Similar claim that includes math is directed to abstract idea (math), but contains significantly more than the math when viewed as an ordered combination because limitations improves the functioning of the display and therefore are eligible.|
Updating Alarm Limits
|Flook||Abstract Idea (Math)||No||Method covers calculating alarm limit either by hand or by computer. This is math, so claim is directed toward abstract idea. Additional claim elements do not create inventive concept. Determining value of process value is data gathering, and adjusting alarm limit is merely post-solution activity.|
|Diehr||Abstract Idea (Math)||Yes||Claim includes the Arrhenius equation (math), so are directed toward an abstract idea. Many of the individual claim steps are cited generally and perform basic functions, or are mere data gathering steps. When the claim is viewed as a whole it is seen that another technical field (rubber molding) is improved, making the claim eligible.|
Internal Combustion Engine
|Abstract Idea (Math)
|Yes||Claim is to an internal cumbustion enginer with a control system that determines rate of change of the throttle position and alters the position of the gas recirculation valve. While the claim relates to math (rate of change), the claim does not seek to tie up this mathematical relationship so others can't practice it. Plus there are meaninful relationships, and the math improves engine technology. Eligibility is self-evident--there is no need to perform the full analysis.|
System Software ‐ BIOS
|Yes||Claim is to a method of loading BIOS into a computer system. Analysis indicates that computer processes involved are not directed toward any exception. Even if they were, claim elements "would clearly amount to significantly more" than an exception (example is unclear, but probably because of improvement to another technical field).|