IP Practice Vlogs: Writing Strong Patents

In the United States, patent prosecution practice is primarily shaped by two governing bodies: 1) the U.S. Patent and Trademark Office (USPTO), which issues procedural practice guidelines, and 2) judicial rulings from the U.S. Court of Appeals for the Federal Circuit. When it comes to the matter of Section 101 subject matter eligibility, the USPTO and the Federal Circuit diverge somewhat in their analysis, specifically in their consideration of what constitutes an “abstract idea.”

Our modern-day concept of “abstract idea” is shaped by the Supreme Court’s ruling in Alice v. CLS Bank in 2014. The USPTO and the Federal Circuit both operate under the Alice doctrine of “abstract idea” when it comes to assessing subject matter eligibility, particularly when it comes to software patents. Alice requires that an “abstract idea” has “something more” than what is well-understood, routine and conventional in order to be patent eligible.

In 2019, the USPTO issued Guidelines which illuminated what constitutes “something more”, basically requiring a practical application of the abstract idea. The Patent Trial and Appeal Board (PTAB) has found that a practical application is demonstrated by showing a technical improvement. Under the USPTO’s approach, a “technical improvement” is an improvement to a machine or the functioning of a machine, designating a series of precedential or informative opinions on this matter. These decisions strongly emphasize that technical improvements should be improvements to machines, such as the improved functioning of MR tomography, or improving a catheter navigation system. However, improving the method of fitting a golf club (i.e., improving user friendliness) is not improving a machine. Improving a life cycle workflow is not improving a machine. The PTAB also assesses whether the claimed method or structure can be integrated with some kind of special purpose machine. “Integration” with a special purpose machine means that the claimed function cannot be performed by mental processes alone (e.g., the applicant has disclosed and is claiming computer-implemented algorithms and processes that cannot be accomplished by a human).

The Federal Circuit, on the other hand, being a court, is not bound by the USPTO’s agency Guidelines. There is no practical application analysis at the Federal Circuit. Rather, the court tends to look at whether there is an improvement. Berkheimer v. HP, decided in 2018, has shaped the Federal Circuit’s approach to “improvement.” In this case, the Federal Circuit’s idea of “improvement” is whether there is something more than what is well-understood, routine and conventional, which is more aligned with the original Alice framework in comparison to the USPTO’s Guidelines. As shown in the Berkheimer and Chamberlain cases, also decided in 2019, the applicant must make a showing that the claimed function is new or not conventional in order to show improvement. The Federal Circuit’s analysis of Section 101 is much closer to the well-understood, routine, conventional test of Alice. The USPTO, however, has tried to focus much more on practical application of a technical improvement. It is important to keep both of these approaches in mind when drafting your application. Watch the latest IP Practice Vlog for tips on how to do so.