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Step 2A - Prong Two: Does the Claim Integrate the Judicial Exception Into A Practical Application?
Even if the claimed invention recites a judicial exception under Prong One, the invention may be patent-eligible if the claim as a whole integrates the recited judicial exception into a practical application of the exception under Prong Two. The MPEP provides examples of limitations the courts have found to be indicative that an additional element (or combination of elements) has integrated the exception into a practical application, and thus rendered the claim patent-eligible. Some examples potentially relevant to FinTech inventions include:
• An improvement in the functioning of a computer, or an improvement to other technology or technical field;
• Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
• Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Prong Two is often where patent-eligibility disputes before the USPTO center. For applicants to effectively argue that the claimed invention improves the functioning of a computer system, it is helpful for the specification to both identify a technical problem with prior art systems and a technical solution to that problem. The success of this patent-eligibility argument can rise or fall on what is or is not included with the application as-drafted.
The guidance also identifies claim limitations that were found not to integrate a judicial exception into a practical application, thus rendering the claim patent-ineligible. In one example, the claims were directed to methods for electronically processing paper checks, including receiving merchant transaction data from a merchant, crediting a merchant’s account, and receiving and scanning paper checks after the merchant’s account is credited. This was deemed not to integrate the judicial exception into a practical application, as this did not improve the technical capture of information from a check to create a digital file or the technical step of electronically crediting a bank account. Nor did the claims improve how a check is scanned.
Step 2B – Does the Claim Recite an Inventive Concept?
The guidance explains that the second part of the test is a search for an “inventive concept,” which is furnished by an element or combination of elements that is recited in the claim in addition to the judicial exception, and is sufficient to ensure that the claim as a whole amounts to “significantly more” than the judicial exception itself. Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. Consideration of the elements in combination is particularly important, because even if an additional element does not amount to significantly more on its own, it can still amount to significantly more when considered in combination with the other elements of the claim. Put another way, an inventive concept may be found in the non-conventional and non-generic arrangement of components that are individually well-known and conventional.
The following are some of the relevant considerations in determining whether the claimed additional elements amount to an inventive concept. There often is significant overlap between the considerations of Step 2B and Step 2A, Prong Two. Limitations found to qualify as “significantly more” when recited in a claim with a judicial exception include:
• Improvements to the functioning of a computer, e.g., a modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage;
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Key Insights for Obtaining FinTech Patents