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The USPTO has issued various versions of guidance on this issue. As of June 2020, this guidance has been compiled into the Manual of Patent Examination Procedure (MPEP), which sets forth a multi-part test for patent-eligible subject matter. First, the invention must be in one of the four statutory categories of invention (processes, machines, manufactures and compositions of matter). This analysis is labelled “Step 1” in the USPTO’s analysis. If the answer is yes, a two-part patent-eligible subject matter test, labelled “Step 2A” and “Step 2B,” is applied.
The first part of the test (Step 2A) is to determine whether the claims are directed to an abstract idea (or other judicial exception). If so, the second part of the test (Step 2B) is to determine whether the claim recites additional elements that amount to “significantly more” than the judicial exception (i.e., an inventive concept). Prior tests for patent-eligible subject matter largely have been subsumed into a “significantly more” (also referred to as “integration” determination.5
The MPEP includes the following flow chart to show the steps and pathways to patent-eligibility.
As shown in the chart, if the claim as a whole is not directed to a judicial exception (Step 2A: NO) it is eligible via Pathway B, thereby concluding the eligibility analysis.6 If the claim as a whole is directed to a judicial exception (Step 2A: YES), further analysis is required (Step 2B) to determine if the claim as a whole amounts to significantly more than the exception itself.
5 As stated in the MPEP, while the Federal Circuit’s earlier “machine-or-transformation test” is an important clue to eligibility, it should not be used as a separate test for eligibility. Instead it should be considered as part of the “integration” determination or “significantly more” determination. Likewise, eligibility should not be evaluated based on whether the claim recites a “useful, concrete, and tangible result” as the mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea. Additionally, the “programmed computer” or “special purpose computer” test of In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545 (Fed. Cir. 1994), which espoused the rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim for the “special purpose” of executing the algorithm or software, was allegedly superseded by the Supreme Court’s decisions. Nor does an abstract idea become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet or a computer. Lastly, eligibility should not be evaluated based on whether the claimed invention has utility, because utility is not the test for patent-eligible subject matter.
6 The mere inclusion of a judicial exception such as a mathematical formula (which is one of the mathematical concepts identified as an abstract idea in MPEP § 2106.04(a)) in a claim means that the claim “recites” a judicial exception under Step 2A Prong One. However, mere recitation of a judicial exception does not mean that the claim is “directed to” that judicial exception under Step 2A Prong Two. Instead, under Prong Two, a claim that recites a judicial exception is not directed to that judicial exception, if the claim as a whole integrates the recited judicial exception into a practical application of that exception. Prong Two thus distinguishes claims that are “directed to” the recited judicial exception from claims that are not “directed to” the recited judicial exception.
How to Successfully Obtain Blockchain Patents
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