Understanding Patent Language
So, you’ve got a great idea and you want to protect that idea with a patent. However, not every idea can be patented. If your idea is a new way of doing business, there are certain rules about whether or not it may be patented. Recently, the US Supreme Court decided to abandon simple rules and look more deeply into each potential patent. As a result, it is now less clear exactly what can be patented.
Section 101 of the patent laws defines statutory subject matter, i.e., what can be patented. Metaphorically, this section is the door to the patent office (USPTO). One of the first things the USPTO will do with a patent application is see if it fits into one the Section 101 categories of things that can be patented. Those categories are: “process, machine, manufacture, or composition of matter.” A “process” in patent law is further defined as a “process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.”
While Section 101 defines what can be patented, the US Supreme Court has defined three categories that cannot be patented. Inventions that consist entirely of laws of nature, physical phenomena, or abstract ideas are not patentable.
Therefore, if you want a patent for a method or process, you have to show that your invention is more than just an abstract idea. In the past, this question has been answered exclusively by the “machine or transformation” test. The machine or transformation test asks: Is the invention tied to a particular machine, or does it transform physical matter? For many years, if the answer was "yes," the invention could be patented, and if the answer was "no," it could not.
However, in 2010 the US Supreme Court said the machine or transformation test is not the only way to determine if a process can be patented. The Court determined that the patentability question could not be answered with just a simple test, because Congress intended a “permissive approach to patent eligibility to ensure that ingenuity should receive a liberal encouragement.” The Court concluded the machine or transformation test is just “a useful and important clue.”
This decision broadened the scope of what can be patented. Now that “machine or transformation” is not the only test, ideas which would not have been patentable before because they did not meet the test may now be patentable. But, the Court did not say how far the scope was broadened. In fact, the Court ultimately decided that the rejected patent the Court was considering should still be rejected because it was just an “abstract idea.”
The lower court that decides most patent cases is the Court of Appeals for the Federal Circuit (CAFC). The CAFC decided two cases in August of 2011 that give us hints as to how the patentability question is now going to be answered.
The first case involved three patents covering a method of administering immunizations according to a schedule, in order to minimize the risk of side effects from the immunizations. The patented methods involved analyzing records from different immunization schedules, then giving immunizations to a patient according to the schedule with less side effects. The immunization records and studies were admitted to be known. The claimed invention was solely the process of analyzing known data and applying the results of that analysis. One of the three patents covered only the steps of analyzing the known data. This patent was held invalid as an abstract idea. However, the CAFC held the other two patents covered patentable subject matter because the final step of administering the immunizations was “a specific, tangible application” of the abstract idea.
The second case involved a patent on a method for preventing online credit card fraud. The patent included two types of claims, method claims and claims to “a computer-readable medium” containing the software for carrying out the method. The patented method involved comparing the internet address of the computer from which a credit card number was supplied to a list of internet addresses previously associated with that number. If the credit card number was supplied from an internet address previously associated with that same credit card, the user was considered valid and the transaction was authorized. The CAFC invalidated the method because it is a mental process – a subcategory of unpatentable abstract ideas. Then, the CAFC said the “computer-readable medium” claims were also invalid even though they literally described an article of manufacture, because the “underlying invention” was an abstract idea.
The patents in both of these cases involved analyzing data and then acting on the results of that analysis. However, only the claims that included a specific and tangible act were upheld. Even though some of the claims technically covered a tangible “manufacture,” the CAFC looked more deeply and found that the underlying idea could not be patented. Therefore, if you want to get a patent on your idea for a new way of doing things, make sure that the substance of your patent claims is specific and tangible.