Patent Subject Matter Eligibility

Patentable Subject Matter Requirement

Under the Patent Act of 1952, not all inventions are patentable. The patentable subject matter requirement addresses the issue of which types of inventions will be considered for patent protection. Section 101 of the Patent Act broadly defines patentable subject matter as "any" new and useful "process, machine, manufacture, or composition of matter," or "improvement thereof."

However, despite this plain language, the Supreme Court has recognized three categories of subject matter outside the eligibility bounds of § 101—laws of nature, physical phenomena (the presently preferred terminology is “natural phenomena”), and abstract ideas.

USPTO Examination Guidance by Date of Issuance

The USPTO's current eligibility guidance is found in the Manual of Patent Examination Procedure (MPEP) Sections 2103 through 2106.07(c).

2019 Patent Subject Matter Eligibility Guidance

Memorandum - Decisions of the U.S. Court of Appeals for the Federal Circuit

December 2016 business method example update

May 2016 subject matter eligibility update

July 2015 subject matter eligibility update

2014 interim guidance on patent subject matter eligibility

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Patent Subject Matter Eligibility Court Decisions

Current confusion about Section 101 doctrine dates back to the U.S. Supreme Court’s 1972 decision in Gottschalk v. Benson, which was further refined by the Supreme Court’s 1978 decision in Parker v. Flook. During the Benson–Flook epoch, patents on software and business method inventions were nearly unattainable.

In 1981, in Diamond v. Diehr, the Supreme Court opened the door to the patentability of computer programs by ruling that controlling a physical process, by executing a computer program, did not preclude patentability of the invention as a whole. After Diehr, patent practitioners found that software could be patented so long as it was combined with another patentable process or machine, even if the software was the only novel feature.

The Supreme Court’s decision in Mayo Collaborative Serv. v. Prometheus Labs., Inc. in 2012 effectively overruled Diamond v. Diehr, upending three decades of stable and predictable law described in Diehr. In 2014, in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, citing Mayo, the Supreme Court compounded the chaos surrounding patent eligibility law. In the post-Alice epoch, the jurisprudence regarding patent eligibility under Section 101 appears to have "fallen off the rails."

U.S. Supreme Court Decisions

Since the early twentieth century, at least ten Supreme Court cases have directly addressed the issue of patent-eligible subject matter.

Post-Alice Federal Circuit Decisions – Patent Eligible – Not Abstract, or "Inventive Concept" Found

Cases (since the Supreme Court's Alice decision in 2014) where the Federal Circuit held that the claims were patent eligble—the court either determined that the claims where not directed to an abstract idea, or found an "inventive concept"—are listed below.

  • TecSEC, Inc. v. Adobe Inc., No. 19-2192 (Fed. Cir. 2020)
  • XY, LLC v. Trans Ova Genetics, LC, 968 F.3d 1323 (Fed. Cir. 2020)
  • Packet Intelligence LLC v. NetScout Systems, Inc., 965 F.3d 1299 (Fed. Cir. 2020)
  • Uniloc USA, Inc. v. LG Electronics USA, Inc., 957 F.3d 1303 (Fed. Cir. 2020)
  • CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020)
  • Koninklijke KPN NV v. Gemalto M2M GmbH, 942 F.3d 1143 (Fed. Cir. 2019)
  • Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306 (Fed. Cir. 2019)
  • Endo Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc., 919 F.3d 1347 (Fed. Cir. 2019)
  • Ancora Technologies, Inc. v. HTC America, Inc., 908 F.3d 1343 (Fed. Cir. 2018)
  • Data Engine Technologies LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018)
  • Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals Int'l Ltd., 887 F.3d 1117 (Fed. Cir. 2018)
  • Aatrix Software v. Green Shades Software, 882 F. 3d 1121 (Fed. Cir. 2018)
  • Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
  • Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018)
  • Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018)
  • Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017)
  • Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017)
  • Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016)
  • McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016)
  • BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)
  • Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)
  • DDR Holdings, LLC v., 773 F.3d 1245 (Fed. Cir. 2014)

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