Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (2)
The Alice/Mayo framework, as discussed in MPEP 2106, has significant implications for software and business method patents. This framework, established by the Supreme Court decisions in Alice Corp. v. CLS Bank International and Mayo Collaborative Services v. Prometheus Laboratories, Inc., has made it more challenging to obtain patents for certain types of software and business methods.
Key implications include:
- Increased scrutiny: Software and business method patents face heightened scrutiny under the Alice/Mayo framework, particularly regarding abstract ideas.
- Focus on technical improvements: Claims that demonstrate a technical improvement or solve a technical problem are more likely to be found eligible.
- Importance of practical application: Software and business method inventions that integrate abstract ideas into practical applications are more likely to be patent-eligible.
- Detailed claim drafting: Claims must be carefully drafted to emphasize technical elements and avoid being characterized as merely implementing abstract ideas on generic computer components.
The MPEP notes: “The courts have found software and business method claims ineligible for patent protection under 35 U.S.C. 101 in some instances, but not in others. It is important to remember that a mathematical concept, an abstract idea, or other judicial exception in a claim does not automatically render the claim as a whole ineligible for patenting.“
Applicants and practitioners must carefully consider the Alice/Mayo framework when drafting and prosecuting software and business method patent applications to improve their chances of obtaining patent protection.
To learn more:
For computer-implemented means-plus-function limitations, the specification must disclose an algorithm for performing the claimed function. The MPEP states:
“For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b).“
A general-purpose computer is not sufficient structure for a computer-implemented function. The algorithm may be expressed in various forms, including as a mathematical formula, in prose, or as a flow chart.
To learn more:
MPEP 2106 – Patent Subject Matter Eligibility (1)
The Alice/Mayo framework, as discussed in MPEP 2106, has significant implications for software and business method patents. This framework, established by the Supreme Court decisions in Alice Corp. v. CLS Bank International and Mayo Collaborative Services v. Prometheus Laboratories, Inc., has made it more challenging to obtain patents for certain types of software and business methods.
Key implications include:
- Increased scrutiny: Software and business method patents face heightened scrutiny under the Alice/Mayo framework, particularly regarding abstract ideas.
- Focus on technical improvements: Claims that demonstrate a technical improvement or solve a technical problem are more likely to be found eligible.
- Importance of practical application: Software and business method inventions that integrate abstract ideas into practical applications are more likely to be patent-eligible.
- Detailed claim drafting: Claims must be carefully drafted to emphasize technical elements and avoid being characterized as merely implementing abstract ideas on generic computer components.
The MPEP notes: “The courts have found software and business method claims ineligible for patent protection under 35 U.S.C. 101 in some instances, but not in others. It is important to remember that a mathematical concept, an abstract idea, or other judicial exception in a claim does not automatically render the claim as a whole ineligible for patenting.“
Applicants and practitioners must carefully consider the Alice/Mayo framework when drafting and prosecuting software and business method patent applications to improve their chances of obtaining patent protection.
To learn more:
MPEP 2181 – Identifying And Interpreting A 35 U.S.C. 112(F) Or Pre – Aia 35 U.S.C. 112 (1)
For computer-implemented means-plus-function limitations, the specification must disclose an algorithm for performing the claimed function. The MPEP states:
“For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b).“
A general-purpose computer is not sufficient structure for a computer-implemented function. The algorithm may be expressed in various forms, including as a mathematical formula, in prose, or as a flow chart.
To learn more:
Patent Law (2)
The Alice/Mayo framework, as discussed in MPEP 2106, has significant implications for software and business method patents. This framework, established by the Supreme Court decisions in Alice Corp. v. CLS Bank International and Mayo Collaborative Services v. Prometheus Laboratories, Inc., has made it more challenging to obtain patents for certain types of software and business methods.
Key implications include:
- Increased scrutiny: Software and business method patents face heightened scrutiny under the Alice/Mayo framework, particularly regarding abstract ideas.
- Focus on technical improvements: Claims that demonstrate a technical improvement or solve a technical problem are more likely to be found eligible.
- Importance of practical application: Software and business method inventions that integrate abstract ideas into practical applications are more likely to be patent-eligible.
- Detailed claim drafting: Claims must be carefully drafted to emphasize technical elements and avoid being characterized as merely implementing abstract ideas on generic computer components.
The MPEP notes: “The courts have found software and business method claims ineligible for patent protection under 35 U.S.C. 101 in some instances, but not in others. It is important to remember that a mathematical concept, an abstract idea, or other judicial exception in a claim does not automatically render the claim as a whole ineligible for patenting.“
Applicants and practitioners must carefully consider the Alice/Mayo framework when drafting and prosecuting software and business method patent applications to improve their chances of obtaining patent protection.
To learn more:
For computer-implemented means-plus-function limitations, the specification must disclose an algorithm for performing the claimed function. The MPEP states:
“For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b).“
A general-purpose computer is not sufficient structure for a computer-implemented function. The algorithm may be expressed in various forms, including as a mathematical formula, in prose, or as a flow chart.
To learn more:
Patent Procedure (2)
The Alice/Mayo framework, as discussed in MPEP 2106, has significant implications for software and business method patents. This framework, established by the Supreme Court decisions in Alice Corp. v. CLS Bank International and Mayo Collaborative Services v. Prometheus Laboratories, Inc., has made it more challenging to obtain patents for certain types of software and business methods.
Key implications include:
- Increased scrutiny: Software and business method patents face heightened scrutiny under the Alice/Mayo framework, particularly regarding abstract ideas.
- Focus on technical improvements: Claims that demonstrate a technical improvement or solve a technical problem are more likely to be found eligible.
- Importance of practical application: Software and business method inventions that integrate abstract ideas into practical applications are more likely to be patent-eligible.
- Detailed claim drafting: Claims must be carefully drafted to emphasize technical elements and avoid being characterized as merely implementing abstract ideas on generic computer components.
The MPEP notes: “The courts have found software and business method claims ineligible for patent protection under 35 U.S.C. 101 in some instances, but not in others. It is important to remember that a mathematical concept, an abstract idea, or other judicial exception in a claim does not automatically render the claim as a whole ineligible for patenting.“
Applicants and practitioners must carefully consider the Alice/Mayo framework when drafting and prosecuting software and business method patent applications to improve their chances of obtaining patent protection.
To learn more:
For computer-implemented means-plus-function limitations, the specification must disclose an algorithm for performing the claimed function. The MPEP states:
“For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b).“
A general-purpose computer is not sufficient structure for a computer-implemented function. The algorithm may be expressed in various forms, including as a mathematical formula, in prose, or as a flow chart.
To learn more:
Sixth Paragraph Limitation (1)
For computer-implemented means-plus-function limitations, the specification must disclose an algorithm for performing the claimed function. The MPEP states:
“For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b).“
A general-purpose computer is not sufficient structure for a computer-implemented function. The algorithm may be expressed in various forms, including as a mathematical formula, in prose, or as a flow chart.
To learn more: