2106.04 Eligibility Step 2: Whether a Claim is Directed to a Judicial Exception
|
I. JUDICIAL EXCEPTIONS
Determining that a claim falls within one of the four enumerated categories of patentable subject matter recited in 35 U.S.C. 101 (i.e., process, machine, manufacture, or composition of matter) in Step 1 does not end the eligibility analysis, because claims directed to nothing more than abstract ideas (such as mathematical algorithms), natural phenomena, and laws of nature are not eligible for patent protection.
In addition to the terms “laws of nature,” “natural phenomena,” and “abstract ideas,” judicially recognized exceptions have been described using various other terms, including:
- “physical phenomena,”
- “products of nature,”
- “scientific principles,”
- “systems that depend on human intelligence alone,” “
- disembodied concepts,”
- “mental processes,” and
- “disembodied mathematical algorithms and formulas.”
It should be noted that there are no bright lines between the types of exceptions, and that many of the concepts identified by the courts as exceptions can fall under several exceptions.
- For example, mathematical formulas are considered to be a judicial exception as they express a scientific truth, but have been labelled by the courts as both abstract ideas and laws of nature.
- Likewise, “products of nature” are considered to be an exception because they tie up the use of naturally occurring things, but have been labelled as both laws of nature and natural phenomena.
- Thus, it is sufficient for this analysis for the examiner to identify that the claimed concept (the specific claim limitation(s) that the examiner believes may recite an exception) aligns with at least one judicial exception.
The Supreme Court has explained that the judicial exceptions reflect the Court’s view that abstract ideas, laws of nature, and natural phenomena are “the basic tools of scientific and technological work”, and are thus excluded from patentability because “monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.”
- The Supreme Court’s concern that drives this “exclusionary principle” is pre-emption.
- The Court has held that a claim may not preempt abstract ideas, laws of nature, or natural phenomena; i.e., one may not patent every “substantial practical application” of an abstract idea, law of nature, or natural phenomenon, even if the judicial exception is narrow (e.g., a particular mathematical formula such as the Arrhenius equation).
- This is because such a patent would “in practical effect [] be a patent on the [abstract idea, law of nature or natural phenomenon] itself.” The concern over preemption was expressed as early as 1852.
While preemption is the concern underlying the judicial exceptions, it is not a standalone test for determining eligibility.
- Instead, questions of preemption are inherent in and resolved by the two-part framework from Alice Corp. and Mayo.
- It is necessary to evaluate eligibility using the Alice/Mayo test, because while a preemptive claim may be ineligible, the absence of complete preemption does not demonstrate that a claim is eligible.
- Several Federal Circuit decisions, however, have noted the absence of preemption when finding claims eligible under the Alice/Mayo test.
The Supreme Court’s decisions make it clear that judicial exceptions need not be old or long-prevalent, and that even newly discovered or novel judicial exceptions are still exceptions.
- For example, the mathematical formula in Flook, the laws of nature in Mayo, and the isolated DNA in Myriad were all novel or newly discovered, but nonetheless were considered by the Supreme Court to be judicial exceptions because they were “‘basic tools of scientific and technological work’ that lie beyond the domain of patent protection.”
The Supreme Court’s cited rationale for considering even “just discovered” judicial exceptions as exceptions stems from the concern that “without this exception, there would be considerable danger that the grant of patents would ‘tie up’ the use of such tools and thereby ‘inhibit future innovation premised upon them.’”
- The Federal Circuit has also applied this principle, for example, when holding a concept of using advertising as an exchange or currency to be an abstract idea, despite the patentee’s arguments that the concept was “new”.
II. ELIGIBILITY STEP 2A: WHETHER A CLAIM IS DIRECTED TO A JUDICIAL EXCEPTION
Step 2A of the Office’s eligibility analysis is the first part of the Alice/Mayotest, i.e., the Supreme Court’s “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.”
- Like the other steps in the eligibility analysis, evaluation of this step should be made after determining what applicant has invented by reviewing the entire application disclosure and construing the claims in accordance with their broadest reasonable interpretation.
Step 2A asks: Is the claim directed to a law of nature, a natural phenomenon (product of nature) or an abstract idea?
- A claim is directed to a judicial exception when a law of nature, a natural phenomenon, or an abstract idea is recited (i.e.,set forth or described) in the claim.
- While the terms “set forth” and “describe” are thus both equated with “recite”, their different language is intended to indicate that there are different ways in which an exception can be recited in a claim.
- For instance, the claims in Diehr set forth a mathematical equation in the repetitively calculating step, the claims inMayo set forth laws of nature in the wherein clause, meaning that the claims in those cases contained discrete claim language that was identifiable as a judicial exception.
- The claims in Alice Corp., however, described the concept of intermediated settlement without ever explicitly using the words “intermediated” or “settlement.”
In the context of the flowchart, Step 2A determines whether:
- The claim as a whole is not directed to a judicial exception (Step 2A: NO) and thus is eligible at Pathway B, thereby concluding the eligibility analysis; or
- The claim as a whole is directed to a judicial exception (Step 2A: YES) and thus requires further analysis at Step 2B to determine if the claim as a whole amounts to significantly more than the exception itself.
A claim directed to a judicial exception requires closer scrutiny for eligibility because of the risk that it will tie up the excluded subject matter and prevent others from using the law of nature, natural phenomenon, or abstract idea.
- However, the courts have carefully construed this “exclusionary principle lest it swallow all of patent law” because “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomenon, or abstract ideas.”
- Examiners should accordingly be careful to distinguish claims that recite an exception (which require further eligibility analysis) and claims that merely involve an exception (which are eligible and do not require further eligibility analysis).
- Further, examiners should consider the claim as a whole when performing the Step 2A analysis.
An example of a claim that recites a judicial exception is “A machine comprising elements that operate in accordance with F=ma.”
- This claim recites the principle that force equals mass times acceleration (F=ma) and is therefore directed to a law of nature exception.
- Because F=ma represents a mathematical formula, the claim could alternatively be considered as directed to an abstract idea.
- Because this claim is directed to a judicial exception (Step 2A: YES), it requires further analysis in Step 2B.
An example of a claim that merely involves, or is based on, an exception is a claim to “A teeter-totter comprising an elongated member pivotably attached to a base member, having seats and handles attached at opposing sides of the elongated member.”
- This claim is based on the concept of a lever pivoting on a fulcrum, which involves the natural principles of mechanical advantage and the law of the lever.
- However, this claim does not recite these natural principles and therefore is not directed to a judicial exception (Step 2A: NO).
- Thus, the claim is eligible without further analysis.
Unless it is clear that the claim recites distinct exceptions, such as a law of nature and an abstract idea, care should be taken not to parse a recited exception into multiple exceptions, particularly in claims involving abstract ideas.
- For example, steps in a claim that recite the manipulation of information through a series of mental steps would be considered a single abstract idea for purposes of analysis rather than a plurality of separate abstract ideas to be analyzed individually.
- However, a claim reciting multiple exceptions is directed to at least one judicial exception (Step 2A: YES) regardless of whether the multiple exceptions are distinct from each other, and thus must be further analyzed in Step 2B.
