What Subject Matters Can Be Protected by Patents in the US?

by Manni Li

In the July issue of the grIP Brief, we discussed what are the statutory categories of patentable subject matters in the U.S. and the three judicially created exceptions to the statutory categories. In this article, we are going to explain the two-step analysis that the Patent Office and courts use to determine whether the claimed invention is directed to patentable subject matter. The test has been established by the U.S. Supreme Court decisions and generally referred to as the Alice/Mayo test. 

Let's look at the following simplified flow chart for the Alice/Mayo test for patent eligibility:

Steps 1 and 2A may seem familiar, as we have discussed them in the last article. Step one is to determine whether the claim (which defines the scope of protection for your invention) falls into one of the four statutory categories. If the answer is no, then, the claim is not a patent eligible subject matter. If yes, then, we go to step 2A.

Step 2A has also been discussed in the last article, which asks whether the claim is directed to any of the three judicially created exceptions. If no, then, the claim qualifies as patent eligible subject matter. If the answer is yes, then, we continue to step 2B and ask whether the claim recite additional elements that amount to significantly more than the judicial exceptions. If the answer is yes, then the claim qualifies as patent eligible subject matter. If the answer is no, then the claim is not eligible for patent.

Then, what is the "additional elements" that can transform an otherwise patent ineligible subject matter to patent eligible? The court has explained that even though these categories of exceptions are not patentable, the practical application using the abstract idea or laws of nature/natural phenomena may be patent eligible. 

In the Patent Office and court decisions, this transformative inventive concept may differ in different technical fields. For example, in the computer technology field, the court has said that some new algorithm or improvement on the computer hardware would be significantly more so that the claim, even though may be directed to an abstract idea, is patent eligible. For another example, in the biotech field, the court has said that, even though the naturally occurring DNA sequences are not patentable eligible, an artificially modified or altered sequence, such as a cDNA sequence that does not exist in nature, would be patent eligible.

As the test for patent eligibility, and especially what constitutes that "significant more”, is constantly evolving, it is very important for the inventors and applicants who seek to protect their inventions to understand the concept of patent eligibility and carefully draft the patent application and claims to be directed to patent eligible subject matters.