Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (4)
Mathematical concepts are one of the three main categories of abstract ideas identified in the MPEP. The MPEP states:
“The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.“
When evaluating whether a claim recites a mathematical concept, examiners consider the following:
- Does the claim recite a mathematical relationship, formula, equation, or calculation?
- Is the mathematical concept merely based on or involves a mathematical concept?
The MPEP clarifies: “A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept.“
Examples of mathematical concepts considered abstract ideas include:
- A formula for computing an alarm limit (Parker v. Flook)
- A method of hedging risk (Bilski v. Kappos)
- An algorithm for converting binary-coded decimal numerals into pure binary form (Gottschalk v. Benson)
It’s important to note that a claim is not automatically ineligible just because it involves a mathematical concept. The claim as a whole must be evaluated to determine if it integrates the mathematical concept into a practical application or provides an inventive concept.
To learn more:
The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
To learn more:
The use of a computer in a claim does not automatically disqualify it from being considered a mental process. The MPEP provides guidance on how to evaluate such claims:
“Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea.”
When evaluating computer-implemented claims, examiners consider whether the claim:
- Recites a mental process performed on a generic computer
- Recites a mental process performed in a computer environment
- Uses a computer as a tool to perform a mental process
The MPEP provides examples for each scenario, such as:
- Collecting information, analyzing it, and displaying results (Electric Power Group v. Alstom)
- Claiming a process of translating a functional description of a logic circuit into a hardware component description (Synopsys v. Mentor Graphics)
The key is to determine whether the claim is directed to an improvement in computer functionality or merely uses the computer as a tool to perform a process that could be done mentally. The mere recitation of computer implementation is not enough to transform a mental process into a patent-eligible invention.
To learn more:
When claims involve both abstract and non-abstract elements, the USPTO follows these guidelines:
- Identify abstract ideas: Examiners first identify any abstract ideas within the claim.
- Evaluate additional elements: They then assess whether the claim includes additional elements that integrate the abstract idea into a practical application or amount to significantly more than the abstract idea itself.
- Consider the claim as a whole: The entire claim is evaluated to determine if it is directed to an abstract idea or if the non-abstract elements transform it into patent-eligible subject matter.
According to MPEP 2106.04(a): “Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above.”
The MPEP further states: “A claim is not ‘directed to’ a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception.”
To learn more:
MPEP 2106.04(A) – Abstract Ideas (4)
Mathematical concepts are one of the three main categories of abstract ideas identified in the MPEP. The MPEP states:
“The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.“
When evaluating whether a claim recites a mathematical concept, examiners consider the following:
- Does the claim recite a mathematical relationship, formula, equation, or calculation?
- Is the mathematical concept merely based on or involves a mathematical concept?
The MPEP clarifies: “A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept.“
Examples of mathematical concepts considered abstract ideas include:
- A formula for computing an alarm limit (Parker v. Flook)
- A method of hedging risk (Bilski v. Kappos)
- An algorithm for converting binary-coded decimal numerals into pure binary form (Gottschalk v. Benson)
It’s important to note that a claim is not automatically ineligible just because it involves a mathematical concept. The claim as a whole must be evaluated to determine if it integrates the mathematical concept into a practical application or provides an inventive concept.
To learn more:
The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
To learn more:
The use of a computer in a claim does not automatically disqualify it from being considered a mental process. The MPEP provides guidance on how to evaluate such claims:
“Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea.”
When evaluating computer-implemented claims, examiners consider whether the claim:
- Recites a mental process performed on a generic computer
- Recites a mental process performed in a computer environment
- Uses a computer as a tool to perform a mental process
The MPEP provides examples for each scenario, such as:
- Collecting information, analyzing it, and displaying results (Electric Power Group v. Alstom)
- Claiming a process of translating a functional description of a logic circuit into a hardware component description (Synopsys v. Mentor Graphics)
The key is to determine whether the claim is directed to an improvement in computer functionality or merely uses the computer as a tool to perform a process that could be done mentally. The mere recitation of computer implementation is not enough to transform a mental process into a patent-eligible invention.
To learn more:
When claims involve both abstract and non-abstract elements, the USPTO follows these guidelines:
- Identify abstract ideas: Examiners first identify any abstract ideas within the claim.
- Evaluate additional elements: They then assess whether the claim includes additional elements that integrate the abstract idea into a practical application or amount to significantly more than the abstract idea itself.
- Consider the claim as a whole: The entire claim is evaluated to determine if it is directed to an abstract idea or if the non-abstract elements transform it into patent-eligible subject matter.
According to MPEP 2106.04(a): “Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above.”
The MPEP further states: “A claim is not ‘directed to’ a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception.”
To learn more:
Patent Law (4)
Mathematical concepts are one of the three main categories of abstract ideas identified in the MPEP. The MPEP states:
“The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.“
When evaluating whether a claim recites a mathematical concept, examiners consider the following:
- Does the claim recite a mathematical relationship, formula, equation, or calculation?
- Is the mathematical concept merely based on or involves a mathematical concept?
The MPEP clarifies: “A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept.“
Examples of mathematical concepts considered abstract ideas include:
- A formula for computing an alarm limit (Parker v. Flook)
- A method of hedging risk (Bilski v. Kappos)
- An algorithm for converting binary-coded decimal numerals into pure binary form (Gottschalk v. Benson)
It’s important to note that a claim is not automatically ineligible just because it involves a mathematical concept. The claim as a whole must be evaluated to determine if it integrates the mathematical concept into a practical application or provides an inventive concept.
To learn more:
The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
To learn more:
The use of a computer in a claim does not automatically disqualify it from being considered a mental process. The MPEP provides guidance on how to evaluate such claims:
“Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea.”
When evaluating computer-implemented claims, examiners consider whether the claim:
- Recites a mental process performed on a generic computer
- Recites a mental process performed in a computer environment
- Uses a computer as a tool to perform a mental process
The MPEP provides examples for each scenario, such as:
- Collecting information, analyzing it, and displaying results (Electric Power Group v. Alstom)
- Claiming a process of translating a functional description of a logic circuit into a hardware component description (Synopsys v. Mentor Graphics)
The key is to determine whether the claim is directed to an improvement in computer functionality or merely uses the computer as a tool to perform a process that could be done mentally. The mere recitation of computer implementation is not enough to transform a mental process into a patent-eligible invention.
To learn more:
When claims involve both abstract and non-abstract elements, the USPTO follows these guidelines:
- Identify abstract ideas: Examiners first identify any abstract ideas within the claim.
- Evaluate additional elements: They then assess whether the claim includes additional elements that integrate the abstract idea into a practical application or amount to significantly more than the abstract idea itself.
- Consider the claim as a whole: The entire claim is evaluated to determine if it is directed to an abstract idea or if the non-abstract elements transform it into patent-eligible subject matter.
According to MPEP 2106.04(a): “Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above.”
The MPEP further states: “A claim is not ‘directed to’ a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception.”
To learn more:
Patent Procedure (4)
Mathematical concepts are one of the three main categories of abstract ideas identified in the MPEP. The MPEP states:
“The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.“
When evaluating whether a claim recites a mathematical concept, examiners consider the following:
- Does the claim recite a mathematical relationship, formula, equation, or calculation?
- Is the mathematical concept merely based on or involves a mathematical concept?
The MPEP clarifies: “A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept.“
Examples of mathematical concepts considered abstract ideas include:
- A formula for computing an alarm limit (Parker v. Flook)
- A method of hedging risk (Bilski v. Kappos)
- An algorithm for converting binary-coded decimal numerals into pure binary form (Gottschalk v. Benson)
It’s important to note that a claim is not automatically ineligible just because it involves a mathematical concept. The claim as a whole must be evaluated to determine if it integrates the mathematical concept into a practical application or provides an inventive concept.
To learn more:
The USPTO uses a two-step process to determine if a claim recites an abstract idea:
- Evaluate the claim language: Examiners analyze the claim to identify any concepts that may be abstract ideas.
- Compare to established abstract idea categories: The identified concepts are compared to the enumerated groupings of abstract ideas and previous court decisions.
According to MPEP 2106.04(a): “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance.”
To learn more:
The use of a computer in a claim does not automatically disqualify it from being considered a mental process. The MPEP provides guidance on how to evaluate such claims:
“Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea.”
When evaluating computer-implemented claims, examiners consider whether the claim:
- Recites a mental process performed on a generic computer
- Recites a mental process performed in a computer environment
- Uses a computer as a tool to perform a mental process
The MPEP provides examples for each scenario, such as:
- Collecting information, analyzing it, and displaying results (Electric Power Group v. Alstom)
- Claiming a process of translating a functional description of a logic circuit into a hardware component description (Synopsys v. Mentor Graphics)
The key is to determine whether the claim is directed to an improvement in computer functionality or merely uses the computer as a tool to perform a process that could be done mentally. The mere recitation of computer implementation is not enough to transform a mental process into a patent-eligible invention.
To learn more:
When claims involve both abstract and non-abstract elements, the USPTO follows these guidelines:
- Identify abstract ideas: Examiners first identify any abstract ideas within the claim.
- Evaluate additional elements: They then assess whether the claim includes additional elements that integrate the abstract idea into a practical application or amount to significantly more than the abstract idea itself.
- Consider the claim as a whole: The entire claim is evaluated to determine if it is directed to an abstract idea or if the non-abstract elements transform it into patent-eligible subject matter.
According to MPEP 2106.04(a): “Examiners should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above.”
The MPEP further states: “A claim is not ‘directed to’ a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception.”
To learn more: