What is the role of preemption in the subject matter eligibility analysis?
While preemption is not a standalone test for eligibility, it remains an underlying concern in the subject matter eligibility analysis. The MPEP explains: “If applicant argues that the claim is specific and does not preempt all applications of the exception, the examiner should reconsider Step 2A of the eligibility analysis, e.g., to determine whether the…
Read MoreWhat are “other meaningful limitations” in patent eligibility analysis?
“Other meaningful limitations” refer to additional elements in a patent claim that provide an inventive concept to the claim as a whole, transforming a judicial exception into patent-eligible subject matter. These limitations are considered during both Step 2A Prong Two and Step 2B of the eligibility analysis. According to MPEP 2106.05(e): “The phrase ‘meaningful limitations’…
Read MoreWhat is the “inventive concept” in the Alice/Mayo test?
The “inventive concept” refers to the second part of the Alice/Mayo test for patent eligibility. As explained in MPEP 2106.05: “An inventive concept ‘cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.’ Instead, an ‘inventive concept’ is furnished by an element or combination of elements that is recited…
Read MoreHow does insignificant extra-solution activity affect patent eligibility?
Insignificant extra-solution activity can negatively impact patent eligibility. According to MPEP 2106.05(g), “As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional.” This means that adding such activities to a claim does not transform an unpatentable principle into…
Read MoreWhat is the purpose of form paragraph 7.05.016 in patent examination?
Form paragraph 7.05.016 is used for rejections under 35 U.S.C. 101 when the claimed invention is directed to a judicial exception without significantly more (i.e., without an inventive concept). This form paragraph should be preceded by form paragraph 7.05. The MPEP provides the following structure for this form paragraph: “the claimed invention is directed to…
Read MoreWhat are examples of improvements to technology that may show patent eligibility?
The MPEP provides several examples of improvements to technology that may demonstrate patent eligibility. According to MPEP 2106.05(a), these include: A particular computerized method of operating a rubber molding press A new telephone, server, or combination thereof An advance in the process of downloading content for streaming Improved, particular method of digital data compression Particular…
Read MoreHow is a claim with a tentative abstract idea evaluated for subject matter eligibility?
When a claim contains a tentative abstract idea, it is evaluated using the standard subject matter eligibility framework: Step 2A: If the claim integrates the tentative abstract idea into a practical application, it’s eligible. Step 2B: If not integrated, the claim is assessed for an inventive concept. The MPEP outlines this process: If the claim…
Read MoreHow does the USPTO evaluate “significantly more” in Step 2B of the subject matter eligibility analysis?
The evaluation of “significantly more” occurs in Step 2B of the subject matter eligibility analysis, as outlined in MPEP 2106.05. This step determines whether the claim amounts to significantly more than the judicial exception. The MPEP states: “Step 2B asks: Does the claim recite additional elements that amount to significantly more than the judicial exception?“…
Read MoreCan a combination of well-understood, routine, conventional elements be patent eligible?
Yes, a combination of well-understood, routine, conventional elements can potentially be patent eligible. The MPEP 2106.05(d) states: “Even if one or more additional elements are well-understood, routine, conventional activity when considered individually, the combination of additional elements may amount to an inventive concept.” This principle is supported by case law. For example, in BASCOM Global…
Read MoreHow should examiners analyze claims for ‘significantly more’ in Step 2B?
When analyzing claims for ‘significantly more’ in Step 2B, examiners should: Identify the additional elements beyond the judicial exception Explain why the additional elements, individually and in combination, do not amount to significantly more Consider whether the additional elements provide an inventive concept Provide evidence if asserting that elements are well-understood, routine, conventional activities MPEP…
Read More