Section 101: Subject Matter Eligibility
Section 101: Introduction
For an invention to be eligible for a patent, The United States Patent and Trademark Office (USPTO) applies a set of laws to determine whether an invention falls within one of these categories. One such law is 35 U.S.C. § 101: Inventions Patentable, commonly referred to as subject matter eligibility.
Under section 101, an invention is only eligible for a patent if it falls into one of the following categories:
- Articles of manufacture,
- Compositions of matter,
- Improvements thereof.
In addition, the claimed invention must be:
- and fully and particularly described.
A patent examiner will review a patent application to determine if the claimed invention meets the established criteria and is eligible for patent protection during the patent application process. If the claimed invention does not meet the requirements, the USPTO examiner may respond with a Section 101 Rejection.
What is a Section 101 Rejection?
A 35 U.S.C. § 101 rejection relates to the subject matter eligibility of the claims. Not everything is necessarily patentable. For example, Laws of nature, natural phenomena, products of nature, or abstract ideas are not considered eligible subject matter for patents. Generally, examiners group the ineligible subject matter into mathematical concepts, certain methods of organizing human activity, or mental processes. The rejection is based on the USPTO’s determination that the claims of the invention are not eligible for patent protection under 35 U.S.C. 101 (see above). When an inventor receives a Section 101 rejection from the USPTO, it is typically the first step in a long process to get a patent. The inventor will need to work with a patent attorney to amend the claims of the invention so that they are eligible for patent protection. Usually, the examiner will reject the claims for reciting one of the following abstract ideas.
EXAMINATION PROCESS UNDER SECTION 101
The USPTO has outlined the consideration process for subject matter eligibility under § 101. Before beginning their analysis, the examiner establishes the broadest reasonable interpretation of the claim. Examiners rely on a two-step process. In the first step, the examiner determines if the claimed subject matter can be categorized into one of the statutory categories: process, machine, manufacture, or composition of matter. These statutory categories are usually comprehensive, ensuring most claims will fit into one of the categories.
Step two of the analysis looks at the judicial exceptions and the invention concept in the claims. Step two has two parts with multiple prongs in each part. If the examiner determines that the claims are not directed to a judicial exception, the claims may be allowable. However, suppose the examiner determines that the claims are directed to a judicial exception. In that case, the examiner will then determine if the claims recite any additional elements that would recite significantly more than the judicial exception. If the examiner determines that the claims recite additional elements that would amount to significantly more than the judicial exception, the claims may also be allowable. Let’s focus on each part of the step 2 analysis.
STEP 2A: Prong 1
In step 2A, examiners will determine whether the claims are directed to a law of nature, natural phenomenon, or abstract idea. If the claims do not recite a judicial exception, the claims are not directed to a judicial exception, and the claims are eligible. Once the claims are determined to recite allowable subject matter, the claims will no longer be rejected under § 101.
While the judicial exceptions for the laws of nature and natural phenomena are relatively straightforward, abstract ideas require a much more complex analysis. Examiners usually group abstract ideas into Mathematical Concepts, Certain methods of Organizing human activity, or mental processes. These general groups require further analysis to determine why the examiner believes the claims recite the identified abstract idea.
Generally, when an examiner issues a § 101 rejection relating to mathematical concepts, the claims may relate to mathematical relationships, mathematical formulas or equations, or mathematical calculations. Applications related to data processing, computing, computer graphics, or other computationally intensive topics may receive this type of rejection.
Certain Methods of Organizing Human Activity
Generally, when an examiner issues a § 101 rejection relating to certain methods of organizing human activity, the claims may relate to fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, or relationships or interactions between people. This type of rejection is commonly seen in applications relating to social media, gaming, home automation, artificial intelligence, banking, gambling, and healthcare information systems. Other examples include a new and unique business model that would require the coordination of human activities between the buyers and the sellers. Other relationships can include the relationship between users and admins, customers and business owners, and other various inter-party relationships and other applications that could theoretically be performed by a human if given the proper resources. Further, examiners commonly group software applications and business method patents into this judicial exception as well.
Generally, when an examiner issues a § 101 rejection concerning certain methods of organizing human activity, the claims may relate to concepts performed in the human mind. Mental processes are usually like applications that could be performed by generic computer components or where a person could perform the claims in the mind. In other words, adding a computer to otherwise conventional steps is not an eligible subject matter. It does not matter how long it would take to complete. Patent claims generally do not qualify because they would perform the mental steps faster than a human.
In general, it is difficult to obtain patent allowance on a process that relates to algorithms, computer operations, software, computerized applications of routine treatments of medical patients, formulas, instructions on how to use a generic computer, or calculations that a generic computer could perform.
STEP 2A: Prong 2
Suppose the examiner determines that the claim recites a judicial exception. In that case, it must be further analyzed to determine if the recited judicial exception is integrated into a practical application of that exception. One way to demonstrate that the claims integrate the judicial exception into a practical application is by showing that the practical application will apply, rely on, or use the judicial exception to impose a meaningful limit on the judicial exception. By demonstrating that the claims are integrated into a practical application such that the judicial exception is limited, the examiner seeks to prevent the claims from being an attempt to monopolize the judicial exception.
To evaluate the integration of the judicial exception into the practical application, examiners must first identify any additional elements recited in the claim beyond the judicial exception, then evaluate the additional elements individually and in combination to determine if the claim elements integrate the exception into the practical application.
Concerning the identified judicial exception from Step 2A, some exemplary conditions that may demonstrate that the additional elements may integrate the exception into a practical application:
- An additional element or combination of elements reflects an improvement in the functioning of a computer or an improvement to other technology or technical field.
- An additional element or combination of elements implements a judicial exception with or uses a judicial exception in conjunction with a particular machine or manufacture integral to the claim.
- An additional element or combination of elements affects a transformation or reduction of a particular article to a different state or thing.
- An additional element or combination of elements applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. The claim as a whole is more than a drafting effort designed to monopolize the exception.
One important consideration for Step 2B is whether the additional elements are well-understood, routine, or conventional activities. While many considerations in Step 2A need not be reevaluated in Step 2B, examiners should continue to consider in Step 2B whether an additional element or combination of elements:
- Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
- Simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
Therefore, if the examiner dismissed some of the additional elements of the claimed subject matter, the examiner should reevaluate those elements under Step 2B. Suppose such reevaluation indicates that the additional element is unconventional or otherwise more than what is a well-understood, routine, conventional activity in the field. In that case, this may indicate that an inventive concept is present and that the claim would be eligible.
In conclusion, overcoming a § 101 rejection of your patent claims requires extensive analysis to demonstrate the subject matter eligibility of your claims. Further, your claims may not be in condition for allowance if there are other rejections such as § 102, § 103, or § 112 still outstanding. Please reach out to us if you would like to speak to a professional regarding your outstanding § 101 rejection.