Page 6 - Key Insights for Obtaining FinTech Patents Brochure
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• Improvements to other technology or a technical field;
• Applying the judicial exception with, or by use of, a particular machine;
• Effecting a transformation or reduction of a particular article to a different state or thing;
• Adding a specific limitation other than what is well- understood, routine, conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application, e.g., a non-conventional and non-generic arrangement of various computer components; or
• Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
We discuss application of these categories in more detail below. But, before doing so, it is helpful to consider limitations that have been found not to be enough to qualify as “significantly more.” including:
• Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer;
• Simplyappendingwell-understood,routine,conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry;
• Adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with an abstract idea such as a step of obtaining information about credit card transactions so that the information can be analyzed by an abstract mental process; or
• Generally linking the use of the judicial exception to a particular technological environment or field of use, e.g., a claim describing how the abstract idea of hedging could be used in the commodities and energy markets.
As can be seen in the following discussion, care must be taken to adequately describe in the application both the technical problem and technical solution, and to include claim language that recites elements of the technical solution in a manner that provides the “inventive concept” under Step 2B.
Categories of Improvements To Consider Under Step 2A-Prong 2 or Step B
Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field
Under this category, the guidelines direct consideration of whether the claim purports to improve the functioning of the computer itself, other technology or a technical field. This consideration has also been referred to as the search for a technological solution to a technological problem, and is often what is argued to show FinTech claims are patent-eligible. This is one of the reasons why the more “tech-heavy” a FinTech claim is, the less likely it is to face a patent-eligibility rejection. However, such “tech-heavy” claims are also less likely to broadly cover the “fin” aspect of the innovation.
According to the guidance, if an applicant argues that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification and provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. However, it is advisable to include the improvement in the specification along with how it is implemented to make patentability arguments more straightforward. Conversely, if the specification explicitly sets forth an improvement
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