Bob Brill patent IP lawyer with business sense | Brill IP Law Office

This post may especially interest people seeking insight into whether or not certain subject matter is eligible for patenting. The patent applications I handle are generally directed to electrical, computer, or mechanical inventions. Related to computers, the discussion below outlines the “favorite things” to be denied eligibility for patenting. Further detail appears in the recent decision Cyberfone Systems v. CNN Interactive Group, __ F. App’x __ (Fed. Cir. 2014). For an introduction to patent eligibility, you are welcome to see my earlier post.

Can’t Claim These

  • Laws of nature.
  • Natural phenomena.
  • Abstract ideas.
  • Principles.
  • Fundamental truths.
  • Original causes.
  • Motives.
  • Basic tools of scientific and technological work.
  • Well-established, fundamental concepts.

Abstract Ideas

From the list above, the category of abstract ideas gets heavy use in disallowing patent claims. Following are examples of abstract ideas ineligible for patenting.

  • Hedging of risk.
  • Enabling tax-free property exchanges.
  • Administering and tracking life insurance policy values.
  • Applying for credit.
  • Verifying credit card transactions.
  • Conducting arbitration.
  • Bidding at an auction.
  • Methods that can be performed in the human mind alone.
  • Simply implementing an abstract concept on a computer, without meaningful limitations to that concept.
  • Mere collection and organization of data.
  • Making originally-gathered information accessible to different destinations without changing the content or its classification.
  • Ordered combinations that add nothing because they follow from the underlying idea of categorical information storage.

Something More

The prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Rather, a patent claim can become eligible by adding limitations sufficient to qualify as an application of natural law. The question becomes whether the added substantive limitations narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself.

Sufficient Limitations

  • A process is patent-eligible if it:
    • is tied to a particular machine or apparatus; or
    • transforms a particular article into a different state or thing.
  • For a machine to impose a meaningful limit it must play a significant part in permitting the claimed method to be performed.

Further detail and examples of these terms appear in my earlier post.

Text Copyright © 2014 Bob Brill

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