Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (5)
Improvements to computer functionality can be a key factor in establishing patent eligibility. According to MPEP 2106.05(a):
“If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.”
The MPEP cites several examples of improvements to computer functionality that courts have found to be patent-eligible:
- A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage (DDR Holdings)
- A specific improvement to the way computers operate (Enfish)
- A particular method of incorporating virus screening into the Internet (Symantec Corp)
However, the MPEP also notes that “the mere fact that a computer may be able to perform the claimed steps more efficiently does not necessarily render an abstract idea less abstract.”
The key is that the improvement must be to the functioning of a computer or other technology, not just an improvement to an abstract idea implemented on a computer.
To learn more:
The “particular machine” consideration plays a significant role in the overall patent eligibility analysis, particularly in the context of the Alice/Mayo test. Here’s how it fits into the broader analysis:
- It’s part of Step 2A Prong Two and Step 2B of the Alice/Mayo test.
- In Step 2A Prong Two, it can help determine if the abstract idea is integrated into a practical application.
- In Step 2B, it can contribute to the “significantly more” analysis.
- A particular machine can potentially transform an abstract idea into patent-eligible subject matter.
MPEP 2106.05(b) states: “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines) is a factor in considering whether it is a ‘particular machine.’”
The MPEP further clarifies: “Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more.”
To learn more:
The Alice Corp. v. CLS Bank International case is a landmark decision that significantly impacted the evaluation of patent eligibility, particularly for computer-implemented inventions. According to MPEP 2106.05(f):
“In Alice Corp. v. CLS Bank International, the claim recited a computer system as a tool for implementing a method of mitigating ‘settlement risk’. The Court concluded that merely requiring generic computer implementation fails to transform the abstract idea into a patent-eligible invention.”
This decision established a two-step framework for determining patent eligibility under 35 U.S.C. 101:
- Determine whether the claims are directed to a patent-ineligible concept (such as an abstract idea).
- If so, consider whether the elements of the claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application.
The Alice decision emphasizes that merely implementing an abstract idea on a generic computer is not enough to make it patent-eligible. Instead, the claims must provide something more, such as an improvement in the functioning of the computer itself or a solution to a technological problem.
To learn more:
“Well-understood, routine, conventional activity” is a key concept in patent eligibility analysis. As explained in MPEP 2106.05(d):
“A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity.”
The MPEP provides several ways an examiner can support such a conclusion:
- A citation to an express statement in the specification or during prosecution
- A citation to one or more court decisions
- A citation to a publication demonstrating the well-understood, routine, conventional nature of the additional element(s)
- A statement that the examiner is taking official notice
It’s important to note that just because something is disclosed in a piece of prior art does not mean it is well-understood, routine, and conventional. The MPEP states: “The question of whether a particular claimed invention is novel or obvious is ‘fully apart’ from the question of whether it is eligible.”
To learn more:
When determining if a machine is “particular” enough to integrate an abstract idea into a practical application for patent eligibility, examiners consider several key factors:
- The machine’s specificity: A general-purpose computer is not typically considered a particular machine, while a specialized computer system might be.
- The degree to which the machine implements the steps of the method: The more integral the machine is to the performance of the method, the more likely it is to be considered “particular.”
- Whether the machine is integral to the claim: If the machine is merely an object on which the method operates, it may not be sufficiently particular.
- The nature of the machine’s involvement: A machine that is merely a conduit for performing the abstract idea is less likely to be considered “particular.”
As stated in MPEP 2106.05(b): “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines).”
To learn more:
MPEP 2106.05 – Eligibility Step 2B: Whether A Claim Amounts To Significantly More (2)
Improvements to computer functionality can be a key factor in establishing patent eligibility. According to MPEP 2106.05(a):
“If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.”
The MPEP cites several examples of improvements to computer functionality that courts have found to be patent-eligible:
- A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage (DDR Holdings)
- A specific improvement to the way computers operate (Enfish)
- A particular method of incorporating virus screening into the Internet (Symantec Corp)
However, the MPEP also notes that “the mere fact that a computer may be able to perform the claimed steps more efficiently does not necessarily render an abstract idea less abstract.”
The key is that the improvement must be to the functioning of a computer or other technology, not just an improvement to an abstract idea implemented on a computer.
To learn more:
“Well-understood, routine, conventional activity” is a key concept in patent eligibility analysis. As explained in MPEP 2106.05(d):
“A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity.”
The MPEP provides several ways an examiner can support such a conclusion:
- A citation to an express statement in the specification or during prosecution
- A citation to one or more court decisions
- A citation to a publication demonstrating the well-understood, routine, conventional nature of the additional element(s)
- A statement that the examiner is taking official notice
It’s important to note that just because something is disclosed in a piece of prior art does not mean it is well-understood, routine, and conventional. The MPEP states: “The question of whether a particular claimed invention is novel or obvious is ‘fully apart’ from the question of whether it is eligible.”
To learn more:
MPEP 2106.05(B) – Particular Machine (2)
The “particular machine” consideration plays a significant role in the overall patent eligibility analysis, particularly in the context of the Alice/Mayo test. Here’s how it fits into the broader analysis:
- It’s part of Step 2A Prong Two and Step 2B of the Alice/Mayo test.
- In Step 2A Prong Two, it can help determine if the abstract idea is integrated into a practical application.
- In Step 2B, it can contribute to the “significantly more” analysis.
- A particular machine can potentially transform an abstract idea into patent-eligible subject matter.
MPEP 2106.05(b) states: “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines) is a factor in considering whether it is a ‘particular machine.’”
The MPEP further clarifies: “Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more.”
To learn more:
When determining if a machine is “particular” enough to integrate an abstract idea into a practical application for patent eligibility, examiners consider several key factors:
- The machine’s specificity: A general-purpose computer is not typically considered a particular machine, while a specialized computer system might be.
- The degree to which the machine implements the steps of the method: The more integral the machine is to the performance of the method, the more likely it is to be considered “particular.”
- Whether the machine is integral to the claim: If the machine is merely an object on which the method operates, it may not be sufficiently particular.
- The nature of the machine’s involvement: A machine that is merely a conduit for performing the abstract idea is less likely to be considered “particular.”
As stated in MPEP 2106.05(b): “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines).”
To learn more:
MPEP 2106.05(F) – Mere Instructions To Apply An Exception (1)
The Alice Corp. v. CLS Bank International case is a landmark decision that significantly impacted the evaluation of patent eligibility, particularly for computer-implemented inventions. According to MPEP 2106.05(f):
“In Alice Corp. v. CLS Bank International, the claim recited a computer system as a tool for implementing a method of mitigating ‘settlement risk’. The Court concluded that merely requiring generic computer implementation fails to transform the abstract idea into a patent-eligible invention.”
This decision established a two-step framework for determining patent eligibility under 35 U.S.C. 101:
- Determine whether the claims are directed to a patent-ineligible concept (such as an abstract idea).
- If so, consider whether the elements of the claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application.
The Alice decision emphasizes that merely implementing an abstract idea on a generic computer is not enough to make it patent-eligible. Instead, the claims must provide something more, such as an improvement in the functioning of the computer itself or a solution to a technological problem.
To learn more:
Patent Law (5)
Improvements to computer functionality can be a key factor in establishing patent eligibility. According to MPEP 2106.05(a):
“If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.”
The MPEP cites several examples of improvements to computer functionality that courts have found to be patent-eligible:
- A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage (DDR Holdings)
- A specific improvement to the way computers operate (Enfish)
- A particular method of incorporating virus screening into the Internet (Symantec Corp)
However, the MPEP also notes that “the mere fact that a computer may be able to perform the claimed steps more efficiently does not necessarily render an abstract idea less abstract.”
The key is that the improvement must be to the functioning of a computer or other technology, not just an improvement to an abstract idea implemented on a computer.
To learn more:
The “particular machine” consideration plays a significant role in the overall patent eligibility analysis, particularly in the context of the Alice/Mayo test. Here’s how it fits into the broader analysis:
- It’s part of Step 2A Prong Two and Step 2B of the Alice/Mayo test.
- In Step 2A Prong Two, it can help determine if the abstract idea is integrated into a practical application.
- In Step 2B, it can contribute to the “significantly more” analysis.
- A particular machine can potentially transform an abstract idea into patent-eligible subject matter.
MPEP 2106.05(b) states: “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines) is a factor in considering whether it is a ‘particular machine.’”
The MPEP further clarifies: “Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more.”
To learn more:
The Alice Corp. v. CLS Bank International case is a landmark decision that significantly impacted the evaluation of patent eligibility, particularly for computer-implemented inventions. According to MPEP 2106.05(f):
“In Alice Corp. v. CLS Bank International, the claim recited a computer system as a tool for implementing a method of mitigating ‘settlement risk’. The Court concluded that merely requiring generic computer implementation fails to transform the abstract idea into a patent-eligible invention.”
This decision established a two-step framework for determining patent eligibility under 35 U.S.C. 101:
- Determine whether the claims are directed to a patent-ineligible concept (such as an abstract idea).
- If so, consider whether the elements of the claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application.
The Alice decision emphasizes that merely implementing an abstract idea on a generic computer is not enough to make it patent-eligible. Instead, the claims must provide something more, such as an improvement in the functioning of the computer itself or a solution to a technological problem.
To learn more:
“Well-understood, routine, conventional activity” is a key concept in patent eligibility analysis. As explained in MPEP 2106.05(d):
“A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity.”
The MPEP provides several ways an examiner can support such a conclusion:
- A citation to an express statement in the specification or during prosecution
- A citation to one or more court decisions
- A citation to a publication demonstrating the well-understood, routine, conventional nature of the additional element(s)
- A statement that the examiner is taking official notice
It’s important to note that just because something is disclosed in a piece of prior art does not mean it is well-understood, routine, and conventional. The MPEP states: “The question of whether a particular claimed invention is novel or obvious is ‘fully apart’ from the question of whether it is eligible.”
To learn more:
When determining if a machine is “particular” enough to integrate an abstract idea into a practical application for patent eligibility, examiners consider several key factors:
- The machine’s specificity: A general-purpose computer is not typically considered a particular machine, while a specialized computer system might be.
- The degree to which the machine implements the steps of the method: The more integral the machine is to the performance of the method, the more likely it is to be considered “particular.”
- Whether the machine is integral to the claim: If the machine is merely an object on which the method operates, it may not be sufficiently particular.
- The nature of the machine’s involvement: A machine that is merely a conduit for performing the abstract idea is less likely to be considered “particular.”
As stated in MPEP 2106.05(b): “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines).”
To learn more:
Patent Procedure (5)
Improvements to computer functionality can be a key factor in establishing patent eligibility. According to MPEP 2106.05(a):
“If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.”
The MPEP cites several examples of improvements to computer functionality that courts have found to be patent-eligible:
- A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage (DDR Holdings)
- A specific improvement to the way computers operate (Enfish)
- A particular method of incorporating virus screening into the Internet (Symantec Corp)
However, the MPEP also notes that “the mere fact that a computer may be able to perform the claimed steps more efficiently does not necessarily render an abstract idea less abstract.”
The key is that the improvement must be to the functioning of a computer or other technology, not just an improvement to an abstract idea implemented on a computer.
To learn more:
The “particular machine” consideration plays a significant role in the overall patent eligibility analysis, particularly in the context of the Alice/Mayo test. Here’s how it fits into the broader analysis:
- It’s part of Step 2A Prong Two and Step 2B of the Alice/Mayo test.
- In Step 2A Prong Two, it can help determine if the abstract idea is integrated into a practical application.
- In Step 2B, it can contribute to the “significantly more” analysis.
- A particular machine can potentially transform an abstract idea into patent-eligible subject matter.
MPEP 2106.05(b) states: “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines) is a factor in considering whether it is a ‘particular machine.’”
The MPEP further clarifies: “Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim. Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more.”
To learn more:
The Alice Corp. v. CLS Bank International case is a landmark decision that significantly impacted the evaluation of patent eligibility, particularly for computer-implemented inventions. According to MPEP 2106.05(f):
“In Alice Corp. v. CLS Bank International, the claim recited a computer system as a tool for implementing a method of mitigating ‘settlement risk’. The Court concluded that merely requiring generic computer implementation fails to transform the abstract idea into a patent-eligible invention.”
This decision established a two-step framework for determining patent eligibility under 35 U.S.C. 101:
- Determine whether the claims are directed to a patent-ineligible concept (such as an abstract idea).
- If so, consider whether the elements of the claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application.
The Alice decision emphasizes that merely implementing an abstract idea on a generic computer is not enough to make it patent-eligible. Instead, the claims must provide something more, such as an improvement in the functioning of the computer itself or a solution to a technological problem.
To learn more:
“Well-understood, routine, conventional activity” is a key concept in patent eligibility analysis. As explained in MPEP 2106.05(d):
“A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity.”
The MPEP provides several ways an examiner can support such a conclusion:
- A citation to an express statement in the specification or during prosecution
- A citation to one or more court decisions
- A citation to a publication demonstrating the well-understood, routine, conventional nature of the additional element(s)
- A statement that the examiner is taking official notice
It’s important to note that just because something is disclosed in a piece of prior art does not mean it is well-understood, routine, and conventional. The MPEP states: “The question of whether a particular claimed invention is novel or obvious is ‘fully apart’ from the question of whether it is eligible.”
To learn more:
When determining if a machine is “particular” enough to integrate an abstract idea into a practical application for patent eligibility, examiners consider several key factors:
- The machine’s specificity: A general-purpose computer is not typically considered a particular machine, while a specialized computer system might be.
- The degree to which the machine implements the steps of the method: The more integral the machine is to the performance of the method, the more likely it is to be considered “particular.”
- Whether the machine is integral to the claim: If the machine is merely an object on which the method operates, it may not be sufficiently particular.
- The nature of the machine’s involvement: A machine that is merely a conduit for performing the abstract idea is less likely to be considered “particular.”
As stated in MPEP 2106.05(b): “The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines).”
To learn more: