In title 35 of United States Code, (effective as from March 16, 2013) section 101 defines patentable inventions as follows:
“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, my obtain a patent therefore, subject to the conditions and requirements of this title.”
In the United States there are generally 2 criteria to determine whether the invention qualifies as patentable subject matter.
One of the Categories
First, the claimed invention must be to one of the four statutory categories as mentioned in section 101. Section 101 names the four categories of invention deemed to be the appropriate subject matter of a patent. They are processes, machines, manufactures and compositions of matter, or any new and useful improvement thereof.
Figure 1: Machine
Four Judicial Exceptions
Secondly, the claimed, invention also must qualify as patent-eligible subject matter. There are four judicial exceptions which are not paten-eligible subject matter. They are abstract ideas, laws of nature and natural phenomena and including products of nature.
Abstract ideas, laws of nature, and natural phenomenon "are the basic tools of scientific and technological work". Monopolizing these tools by granting patent rights may impede innovation rather than promote it.
Figure 2: Abstract Idea
Exception to the Four Judicial Exceptions
The claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception.
An invention is not considered to be ineligible for patenting simply because it involves a judicial exception. Therefore, the mere fact that a mathematical equation is required to complete the claimed method and system does not doom the claims to not being patentable subject matter. The integration of an abstract idea, law of nature or natural phenomenon into a practical application may be eligible for patent protection.
Something More Additional Steps
A distinction must be made between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into something more. The overall process may be patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole. However simply implementing a mathematical principle on a physical machine, namely a computer, is not a patentable application of that principle. An abstract idea, law of nature, or mathematical formula could not be patented. However, an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.
Alice/Mayo Test
Figure 3: Alice/Mayo Test
The Supreme Court (citing Mayo, 566 U.S. 66, 101 USPQ2d 1961) laid out a framework for determining whether an applicant is seeking to patent a judicial exception itself, or a patent-eligible application of the judicial exception. See Alice Corp., 573 U.S. at 217-18, 110 USPQ2d at 1981. This framework, which is referred to as the Mayo test or the Alice/Mayo test. The first part of the Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception). If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception The Supreme Court has described the second part of the test as the "search for an 'inventive concept'". Alice Corp., 573 U.S. at 217-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966). (USPTO MPEP, 2020)
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USPTO MPEP, U. S. (2020, June 25). 2106 Patent Subject Matter Eligibilty. Retrieved August 8, 2022, from uspto.gov: https://www.uspto.gov/web/offices/pac/mpep/s2106.html
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