How does the use of a machine or transformation test affect patent eligibility?
The machine-or-transformation test can be a useful tool in determining whether a claim recites significantly more than a judicial exception. However, it is not the sole test for deciding whether an invention is a patent-eligible application of an abstract idea. According to MPEP 2106.05(f): “Use of a machine or transformation of an article must impose…
Read MoreWhat is the “machine-or-transformation test” in patent eligibility?
The “machine-or-transformation test” is a useful tool for determining whether a claimed invention is patent-eligible under 35 U.S.C. 101. According to MPEP 2106.05(c), this test states that: “A claimed process is patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a…
Read MoreWhat are laws of nature and natural phenomena in patent law?
Laws of nature and natural phenomena, as identified by the courts, include naturally occurring principles/relations and nature-based products that are naturally occurring or that do not have markedly different characteristics compared to what occurs in nature. The Manual of Patent Examining Procedure (MPEP) Section 2106.04(b) states: “The law of nature and natural phenomenon exceptions reflect…
Read MoreWhat are the key factors in determining if a machine is “particular” for patent eligibility?
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…
Read MoreWhat 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…
Read MoreWhat are judicial exceptions in patent law?
Judicial exceptions in patent law are categories of subject matter that the courts have found to be outside the four statutory categories of invention. The MPEP defines judicial exceptions as: “abstract ideas, laws of nature and natural phenomena (including products of nature).” These exceptions are not patentable on their own because they are considered the…
Read MoreDoes the inventor’s consent matter for the on-sale bar?
No, the inventor’s consent is not required for a sale to trigger the on-sale bar under 35 U.S.C. 102(b). The MPEP clearly states: If the invention was placed on sale by a third party who obtained the invention from the inventor, a patent is barred even if the inventor did not consent to the sale…
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 the USPTO evaluate integration of a judicial exception into a practical application?
The USPTO evaluates integration of a judicial exception into a practical application in Step 2A Prong Two by identifying whether there are any additional elements recited in the claim beyond the judicial exception and evaluating those elements to determine whether they integrate the exception into a practical application. As stated in MPEP 2106.04(d): “A claim…
Read MoreWhat is the significance of a machine’s integral use in a method claim?
The integral use of a machine in a method claim can be crucial for patent eligibility. According to MPEP 2106.05(b): “Integral use of a machine to achieve performance of a method may integrate the recited judicial exception into a practical application or provide significantly more, in contrast to where the machine is merely an object…
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