IP Practice Vlogs: Delving into Some USPTO Examples on Patent Eligibility and Whether PERA Will Eliminate the Technological Improvement Test

The technological improvement test is used by the U.S. Patent and Trademark Office (USPTO) and the U.S. Court of Appeals for the Federal Circuit to determine the issue of subject matter eligibility. Of all the tests for a showing of something more or practical application – machine transformation, machine implementation, data transformation – technological improvement is probably the most popular and oft-used by applicants because it has the clearest standards. As you probably already know, the technological improvement test used by the USPTO looks for a technological problem for which there is a technological solution and the claims recite a technological improvement therefor. Further, the prongs of the technological improvement test require framing the issues in terms of how a computer or a machine functions. In contrast, the machine transformation and the machine implementation tests are less clear as to the sufficiency of machine transformation or implementation to meet practical application. There is a great deal of nuance to the technological improvement test. Why are some computer-implemented inventions found to have technological improvement but others don’t?

In the latest IP Practice Vlogs video, I will asses technological improvement, specifically in the context of software patents, as this test greatly impacts the patentability of software and AI applications. We will go through some of the USPTO’s examples accompanying the Patent Eligibility Guidance (PEG) where technological improvement is preeminently featured, namely some exemplary claims in examples 45, 46 along with the designated informative Patent Trial and Appeal Board (PTAB) decision, Ex Parte Kimizuka. These examples were issued after 2019, which is after the Berkheimer v. HP memo.

Caution with Using Technological Improvement

After going through the examples, you will see that if you as the applicant are really trying to meet the steps of the technological improvement analysis, you also have to get into technological problems in order to meet the USPTO’s framework of tying technological improvement to a specific technological problem and technological solution. However, if your invention has anything to do with safety or has any kind of safety implications with respect to its use or implementation, you need to be very wary of talking about problems or improvements. Improvements imply preexisting knowledge of defects. And in product liability, the plaintiff and their attorneys are all about establishing that you knew about said defects.

I’m not a big fan of the technological improvement test because I believe it will ultimately prove to discourage innovative disclosures. And, as you will see from the examples discussed, technological improvement is really a Section 102/103 question no matter how much the USPTO tries to shove the matter into practical application.

Will the Patent Eligibility Restoration Act (PERA) of 2023 Undo Technological Improvement?

Will the newly proposed Section 101 bill change technological improvement? Probably, at the Federal Circuit. In fact, the proposed bill may even eliminate the test altogether at the judicial level. But how the bill affects technological improvement at the USPTO is debatable. As discussed in the accompanying vlog, the USPTO moved technological improvement to a practical application analysis, strictly away from the well-understood, routine and conventional analysis used by the Federal Circuit. This creates an interesting scenario.

In particular, the proposed bill in its current form attempts to fix 101 by means of eliminating judicial exceptions under Step 2A, and eliminating Alice’s well-understood, routine and conventional test under Step 2B. Two things are notable about the bill’s method of clarifying subject matter eligibility:

  1. The bill eliminates all court-created judicial exceptions under Section 2 Part A, yet mathematical formulas and mental processes are still designated as being explicitly excluded from categories of inventions eligible for patent protection under Section 2 Part D.
  2. The bill negates the well-understood, routine and conventional test to determine what is “significantly more” than an abstract idea, yet the proposal remains silent on the USPTO’s practical application analysis implemented in the 2019 Guidance that is followed by the PTAB.

The combination of these factors will likely significantly impact the Federal Circuit’s approach towards subject matter eligibility.  However, by failing to address the practical application analysis of the USPTO’s Step 2A Prong 2, the proposed bill will still leave the PTAB’s current approach of subject matter eligibility mainly intact. Therefore, the 2019 PEG may possibly shield technological improvement from the bill’s elimination of the well-understood, conventional test because it’s question of practical application under the PEG when the test ought to be eliminated entirely as being a progeny of the well-understood, routine and conventional analysis.

As much as the technological improvement test gets analogized to the technical application test in Europe, these tests are not the same. Europe implements a problem/solution framework for assessing subject matter eligibility. The USPTO adopts a problem/solution AND improvement approach. Europe does NOT require technical progress for determining patentability. But the technological improvement test does, making the U.S. test for subject matter eligibility far more different from Europe’s than many have suggested in the past.

These factors underscore the problematic nature of the continuing use of the technological improvement test and, should the newly proposed Section 101 bill pass, I hope the USPTO will update its subject matter eligibility guidance in accordance with Congress’s intent to eliminate any tests having to do with conventionality as a means of determining subject matter eligibility.



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Join the Discussion

7 comments so far.

  • [Avatar for Anon]
    August 15, 2023 10:57 am

    Oh, I really really do want a useful answer.

    Shock me and provide one.

    (contemplate US law in the regards of the fact that our Constitution allocates authority to write patent law to only one single branch)

  • [Avatar for Max Drei]
    Max Drei
    August 15, 2023 09:37 am

    Do I know the answer? I’m surprised at you, anon, asking me such a question. You never cease telling me that I know nothing about US patent law. I will take it that you pose the question only rhetorically and are not wanting or expecting a useful answer.

    What am I aiming for? To provoke answers that improve my understanding of US patent law and (my clients) its practitioners. Understanding them better helps me to serve them better.

    Nevertheless, I’m grateful to you for revealing a misunderstanding between us. The 35 USC 101 eligibility “hurdle” I am referring to is not the ultra-low one installed by the legislator but rather, the much higher one (with its reference to “inventive concept”) installed by the courts, at pains to dispose of cases justly ie swiftly.

  • [Avatar for Anon]
    August 15, 2023 06:38 am


    You have been around US patent blogs well long enough to know the answer to your (leading) question of, “Is it not intended as a cut-out, to bring proceedings to an early end, short of having to get into an exhausting and expensive obviousness enquiry?” to be — as intended by Congress — exactly opposite of where you want to lead.

    As we both know that you well know this, I am left wondering what you are aiming for with a question like this.

  • [Avatar for Max Drei]
    Max Drei
    August 14, 2023 05:42 pm

    Being in Europe, I wish to clarify the way eligibility and patentability are examined at the EPO. In particular, I am not aware of any “technical application” test in Europe.

    Eligible is anything that has “technical character”. Data processing hardware has it but a method of doing business or playing a game, as such, does not. Compare GATT-TRIPS and its definition of patentable matter viz “all fields of technology”. At the EPO, for eligibility there is no enquiry into novelty, or what is “conventional”, and nobody asks if there is any inventive concept. To say it is a low “hurdle” is an exaggeration.

    Quite otherwise is the “technical effect” based obviousness enquiry at the EPO. Does the claimed subject matter solve, with technology, an objective problem in technology? Is the claim directed to a non-obvious solution to a technical problem? Only a Yes answer is good enough to pass Europe’s 103 hurdle (Art 56 EPC). It’s a high hurdle.

    Clear now? No wonder so many people huff and puff about the height of the eligibility hurdle in the USA. Is it not intended as a cut-out, to bring proceedings to an early end, short of having to get into an exhausting and expensive obviousness enquiry?

  • [Avatar for F22strike]
    August 14, 2023 01:38 pm

    Big-tech got the AIA passed by lobbying Congress. Big-tech will continue to lobby Congress so that there will be no meaningful patent reform. Except in rare cases, US patents cannot be enforced and are therefore essentially worthless. Without meaningful patent reform it is difficult for a company to justify the expense of R &D. Innovation will continue to decline in the US, reducing its standard of living. A large percentage of the US population just wants free stuff from the Government. They couldn’t care less about the health of the US patent system. Please post links to any videos of public protests in front of the SCOTUS with signs that read FIX PATENT ELIGIBILITY NOW!

  • [Avatar for Anon]
    August 12, 2023 03:09 pm

    Would love to see a count of how many practitioners have requested the Office to provide substantive definitions of such things as “technological” (or even “something more”).

    How many have received substantive answers (and by substantive, I do not mean an example of some item of the past, but a definition that could be applied looking forward)?

    I would draw a sharp distinction between actions of the Office (in mirroring) and actions of the Courts, as the Courts operate under different legal protocols and the Office — as an administrative agency under the Executive Branch, simply does not have the leeway of the Courts.

    Not to leave the third branch out of this, as while they did not create the current mess of eligibility jurisprudence (that would have been the Supreme Court), Congress IS the single branch of the government with legitimate power to set things straight. That they have not done so is a blight on our nation.

  • [Avatar for Pro Say]
    Pro Say
    August 11, 2023 02:08 pm

    Thanks Wen. Yet another excellent, actionable piece.