united-states patents
How much &quot;more&quot; needs to be added to an abstract idea in order to pass the subject matter eligibility test for a patent?
<p>In <em>Mayo v. Prometheous 566 U. S. ____ (2012)</em>, the Supreme Court said (regarding 35 U.S.C. §101 subject matter eligibility):</p>

<blockquote>
  <p>a process that focuses upon the use of a natural law [must] also
  contain other elements or a combination of elements,
  sometimes referred to as an “inventive concept,” sufficient
  to ensure that the patent in practice amounts to significantly
  more than a patent upon the natural law itself.</p>
</blockquote>

<p>This was reiterated in <em>Alice v. CLS Bank 573 U.S. ___ (2014)</em>:</p>

<blockquote>
  <p>a court must first “identif[y] the abstract idea represented in the claim,” and then determine “whether the balance of the claim adds ‘significantly more.’” </p>
</blockquote>

<p>What is the standard for judging, as part of assessing subject matter eligibility, whether the claimed process contains "significantly more" such that it is not preempting entirely the use of the natural law (or abstract idea, or other ineligible concept) itself?</p>

<p>The USPTO has incorporated the test for &quot;significantly more&quot; in their subject matter eligibility test as follows (see step 2B):</p>
<p><img src="https://i.stack.imgur.com/BES6M.png" alt="enter image description here" /></p>
<p>(Figure from <a href="http://www.gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf" rel="nofollow noreferrer">2014 Interim Guidance on Subject Matter Eligibility</a>.)</p>
<p>The USPTO says (<em>ibid.</em>):</p>
<blockquote>
<p>A claim directed to a judicial
exception must be analyzed to
determine whether the elements of the
claim, considered both individually and
as an ordered combination, are
sufficient to ensure that the claim as a
whole amounts to significantly more
than the exception itself.</p>
</blockquote>
<p>They say this several different ways:</p>
<blockquote>
<p>this has been termed a search for an inventive concept</p>
<p>...</p>
<p>To be patent-eligible, a
claim that is directed to a judicial
exception must include additional
features to ensure that the claim
describes a process or product that
applies the exception in a meaningful
way, such that it is more than a drafting
effort designed to monopolize the
exception</p>
</blockquote>
<p>In section 2.B.1., they give a summary of Supreme Court jurisprudence on this point, listing examples of considerations that have been found relevant for this analysis of &quot;whether a claim with
additional elements amounts to
significantly more than the judicial
exception itself&quot;.</p>
<p>Limitations that &quot;may be enough to qualify as significantly more&quot; (<em>ibid.</em>):</p>
<ul>
<li>Improvements to another
technology or technical field</li>
<li>Improvements to the functioning of
the computer itself</li>
<li>Applying the judicial exception
with, or by use of, a particular
machine</li>
<li>Effecting a transformation or
reduction of a particular article to a
different state or thing</li>
<li>Adding a specific limitation other
than what is well-understood, routine
and conventional in the field, or adding
unconventional steps that confine the
claim to a particular useful
application</li>
<li>Other meaningful limitations
beyond generally linking the use of the
judicial exception to a particular
technological environment</li>
</ul>
<p>Examples of limitations that are <em>insufficient</em> to qualify as significantly more (<em>ibid.</em>):</p>
<ul>
<li>Adding the words ‘‘apply it’’ (or an
equivalent) with the judicial exception,
or mere instructions to implement an
abstract idea on a computer</li>
<li>Simply appending well-understood,
routine and conventional activities
previously known to the industry,
specified at a high level of generality, to
the judicial exception</li>
<li>Adding insignificant extrasolution
activity to the judicial exception</li>
<li>Generally linking the use of the
judicial exception to a particular
technological environment or field of
use</li>
</ul>

<p>Nobody really knows.</p>

<p>(NB: the "you" in this answer is a <a href="https://en.wikipedia.org/wiki/Generic_you" rel="nofollow">generic person</a> and not <em>you personally</em>; as always, you should consult a lawyer before relying on random information you found on the internet)</p>

<p>The USPTO's opinion is relevant, if you're just trying to get a patent.  But if you want to use it in a court of law, it needs to be acceptable to the judiciary, not the USPTO.  And the Supreme Court has been rather vague about this one.  Worse, it seems there's a fundamental disconnect between the Supreme Court and the Federal Circuit.  Looking at <em>Alice</em> in particular, the Federal Circuit split seven different ways, with no opinion holding a majority.  Then the Supreme Court looked at it and unanimously ruled that it was a straightforward application of <em>Mayo</em>.  Unfortunately, they thought it was so straightforward that they declined to provide any further guidance.  Thus, the Federal Circuit is guessing just as much as we are.</p>

<p>I think <em>Diamond v. Diehr</em> may provide guidance.  In that case, the computer was controlling a rubber curing machine, and the patent was on the whole apparatus.  That was upheld, and so far as I'm aware, this has not been revisited or seriously questioned.  It seems (to me) that satisfying the machine-or-transformation test is a sufficient condition for section 101 patent eligibility.  But <em>Bilski</em> made it clear that this is not a necessary condition.</p>

<p>Looking to the other extreme, in <em>Alice</em> and <em>Bilski</em>, we see people taking traditional business methods (such as hedging, escrow, etc.) and applying them on a computer.  This is not patentable.  But they're not patentable under section 101, not on the basis of prior art or some other reasoning.  So this isn't about the age of the business methods.  It's about their nature.  They are abstract ideas, disconnected from physical matter, and often rather vague so as to cover the entire concept rather than one specific implementation.</p>

<p>Where's the boundary?  I would look carefully at patents which relate to physics without directly interacting with physical matter.  This would include things such as these:</p>

<ul>
<li>Audio and video codecs</li>
<li>CAD software</li>
<li>Image manipulation software</li>
</ul>

<p>I don't know whether any or all of these things are patentable, but I believe they are probably close to the boundary line, one way or another (at least, closer than the extremes discussed above).  I should note that the MPEG-LA already holds several patents on image and video codecs (and possibly audio codecs as well, I'm not sure), but I'm not aware of any case which went to trial in which they asserted any of those patents.  They have had some public back-and-forth with Google over whether or not the WebM format infringes these patents, so it's possible we'll get an answer in this space.</p>

<p>To maximize the chances of patentability, these patents would need to be highly specific about their design and implementation, as both <em>Alice</em> and <em>Bilski</em> were very critical of vague patents.  As a developer, I would consider source code ideal for this, but it's not clear to me that the courts would agree.  Even without source code, though, good patents would be wide open to clean-room reverse engineering once they expire.  Since copyright lasts much longer than patents in most jurisdictions, this may not be a net win.</p>

<p>You seem to know as well as anybody. I'll phrase it in one more way: it can't just be "insignificant post-solution activity." (Bilski).</p>

<p>Also note that the Machine-or-Transformation test is still helpful. Bilski only said that it wasn't the <em>only</em> test, and Mayo and CLS Bank are kind of exceptions to the norm -- because the "machine" involved in CLS Bank was pretty much just a pretense for an algorithm.</p>

<p>Generally, I would also say that the more inventive it seems, the nicer courts are going to be to you, and the more it seems like bullshit, the more courts are going to hate you. The PTO tries to follow stricter rules than that, but you get to work with your examiner so he can inform you better than we do.</p>
