Updated Guidelines on Subject Eligibility
On July 30, the PTO recently released updated Alice guidelines based upon comments received in response to the previous guidelines (2014 IEG) of 2014. The new guidelines include helpful examples of what is now patentable and what is now not patentable, particularly with respect to computer implemented abstract ideas.
Under the 2014 IEG, a two-part analysis for judicial exceptions was introduced. Under Step 2A it is determined whether the claim is directed to a law of nature, a natural phenomenon, or an abstract idea (judicial recognized exceptions). Under Step 2B, if yes to Step 2A, it is determined whether the claim recites additional elements that amount to significantly more than the judicial exception.
The updated guidelines further example how the office will identify an abstract idea judicial exception. Four categories of abstract ideas were given.
A. Fundamental economic practice: agreements between people in the form of contracts, legal obligations and business relations. Examples, hedging in Bilski, mitigating settlement risk in Alice Corp, and creating a contractual relationship in buySAFE.
B. Certain Methods of Organizing Human Activity: concepts relating to interpersonal and intrapersonal activities such as managing relationships or transactions between people. The term “certain” is used to remind examiners that (1) not all methods of organizing human activity are abstract ides, and (2) this category description is not meant to cover human operation of machines. Examples, Bilski, Alice Corp, and buySAFE, and further include processing loan information (Dealertrack), managing an insurance policy in Bancorp, managing a game of Bingo (Planet Bingo), allowing players to purchase additional objects during a game (Gametek) and generating rule-based task for processing an insurance claim (Accenture).
C. An idea of itself: an idea standing alone such as an uninstantiated concept, plan or scheme as well as a mental process that can be performed in the human mind or by a human using pen and paper. Using categories to organize, store and transmit information (Cyberfone), data recognition and storage (Content Extraction) and organizing information through mathematical correlations (Digitech).
D. Mathematical relationships/formulas
The PTO also gave many helpful examples of eligible and not eligible claims.
One common theme I noticed from many of the computer related examples was that claims that go beyond merely retrieving and combining data using a computer and can be shown to improve the functioning of the computer itself were eligible. That is, merely limiting an abstract idea to a computer is not enough. Further, limitations that are considered mere pre-solution or post-solution activity will not be considered significantly more.
Conclusion: Computer related inventions should make clear how they improve the functioning of a computer itself, or what processing is done besides generic computer functions.
Good Sentence to Use: The claim recites the additional limitations of [ ]. When looking at the additional limitations as an ordered combination, the invention as a whole amounts to significantly more than simply organizing and comparing data. The claimed invention addresses [the problem] by [the solution]. These are meaningful limitations that add more than generally linking the use of the abstract idea to the Internet and confine the abstract idea to a particular useful application.
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