Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (3)
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:
What are the key considerations for integrating a judicial exception into a practical application?
What are the key considerations for integrating a judicial exception into a practical application?
The key considerations for integrating a judicial exception into a practical application include:
- Improvement to the functioning of a computer or technology: The claimed invention should provide a technical improvement.
- Application of the judicial exception: The claim should apply or use the judicial exception in a meaningful way beyond generally linking it to a particular technological environment.
- Particular machine or manufacture: The claim should implement the judicial exception with a particular machine or manufacture that is integral to the claim.
- Transformation of an article: The claim should effect a transformation or reduction of a particular article to a different state or thing.
As stated in MPEP 2106.04(d): “A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.”
To learn more:
Adding a generic computer or generic computer components to a claim does not automatically make it patent-eligible. The MPEP 2106.05(b) provides clear guidance on this matter:
“Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection.”
This principle is based on the Supreme Court’s decisions in Bilski and Alice Corp. When evaluating claims with added generic computer elements, examiners should consider:
- Whether the added elements integrate the exception into a practical application
- Whether they provide significantly more than the judicial exception
It’s important to note that the rationale from Alappat, which suggested that an otherwise ineligible algorithm could be made patent-eligible by adding a generic computer, has been superseded by more recent Supreme Court decisions.
Applicants should focus on demonstrating how the computer elements contribute to the claim’s eligibility beyond merely performing generic computer functions.
To learn more:
MPEP 2106.04(D) – Integration Of A Judicial Exception Into A Practical Application (1)
What are the key considerations for integrating a judicial exception into a practical application?
What are the key considerations for integrating a judicial exception into a practical application?
The key considerations for integrating a judicial exception into a practical application include:
- Improvement to the functioning of a computer or technology: The claimed invention should provide a technical improvement.
- Application of the judicial exception: The claim should apply or use the judicial exception in a meaningful way beyond generally linking it to a particular technological environment.
- Particular machine or manufacture: The claim should implement the judicial exception with a particular machine or manufacture that is integral to the claim.
- Transformation of an article: The claim should effect a transformation or reduction of a particular article to a different state or thing.
As stated in MPEP 2106.04(d): “A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.”
To learn more:
MPEP 2106.05 – Eligibility Step 2B: Whether A Claim Amounts To Significantly More (1)
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:
MPEP 2106.05(B) – Particular Machine (1)
Adding a generic computer or generic computer components to a claim does not automatically make it patent-eligible. The MPEP 2106.05(b) provides clear guidance on this matter:
“Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection.”
This principle is based on the Supreme Court’s decisions in Bilski and Alice Corp. When evaluating claims with added generic computer elements, examiners should consider:
- Whether the added elements integrate the exception into a practical application
- Whether they provide significantly more than the judicial exception
It’s important to note that the rationale from Alappat, which suggested that an otherwise ineligible algorithm could be made patent-eligible by adding a generic computer, has been superseded by more recent Supreme Court decisions.
Applicants should focus on demonstrating how the computer elements contribute to the claim’s eligibility beyond merely performing generic computer functions.
To learn more:
Patent Law (3)
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:
What are the key considerations for integrating a judicial exception into a practical application?
What are the key considerations for integrating a judicial exception into a practical application?
The key considerations for integrating a judicial exception into a practical application include:
- Improvement to the functioning of a computer or technology: The claimed invention should provide a technical improvement.
- Application of the judicial exception: The claim should apply or use the judicial exception in a meaningful way beyond generally linking it to a particular technological environment.
- Particular machine or manufacture: The claim should implement the judicial exception with a particular machine or manufacture that is integral to the claim.
- Transformation of an article: The claim should effect a transformation or reduction of a particular article to a different state or thing.
As stated in MPEP 2106.04(d): “A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.”
To learn more:
Adding a generic computer or generic computer components to a claim does not automatically make it patent-eligible. The MPEP 2106.05(b) provides clear guidance on this matter:
“Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection.”
This principle is based on the Supreme Court’s decisions in Bilski and Alice Corp. When evaluating claims with added generic computer elements, examiners should consider:
- Whether the added elements integrate the exception into a practical application
- Whether they provide significantly more than the judicial exception
It’s important to note that the rationale from Alappat, which suggested that an otherwise ineligible algorithm could be made patent-eligible by adding a generic computer, has been superseded by more recent Supreme Court decisions.
Applicants should focus on demonstrating how the computer elements contribute to the claim’s eligibility beyond merely performing generic computer functions.
To learn more:
Patent Procedure (3)
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:
What are the key considerations for integrating a judicial exception into a practical application?
What are the key considerations for integrating a judicial exception into a practical application?
The key considerations for integrating a judicial exception into a practical application include:
- Improvement to the functioning of a computer or technology: The claimed invention should provide a technical improvement.
- Application of the judicial exception: The claim should apply or use the judicial exception in a meaningful way beyond generally linking it to a particular technological environment.
- Particular machine or manufacture: The claim should implement the judicial exception with a particular machine or manufacture that is integral to the claim.
- Transformation of an article: The claim should effect a transformation or reduction of a particular article to a different state or thing.
As stated in MPEP 2106.04(d): “A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.”
To learn more:
Adding a generic computer or generic computer components to a claim does not automatically make it patent-eligible. The MPEP 2106.05(b) provides clear guidance on this matter:
“Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection.”
This principle is based on the Supreme Court’s decisions in Bilski and Alice Corp. When evaluating claims with added generic computer elements, examiners should consider:
- Whether the added elements integrate the exception into a practical application
- Whether they provide significantly more than the judicial exception
It’s important to note that the rationale from Alappat, which suggested that an otherwise ineligible algorithm could be made patent-eligible by adding a generic computer, has been superseded by more recent Supreme Court decisions.
Applicants should focus on demonstrating how the computer elements contribute to the claim’s eligibility beyond merely performing generic computer functions.
To learn more: