Last Tuesday I attended the Inventors Association of Connecticut (IACT) meeting at Fairfield University. Another patent attorney was presenting on the patentability of computer-implemented inventions. After Alice, the two-part test on whether a invention is patent eligible is: 1. is the claim directed to a judicial exception (law of nature, natural phenomenon, or an abstract idea); 2. if yes, then does the claim recite additional elements that amount more to the judicial exception.
My normal practice is to write claims that are clearly not an abstract idea (claims directed to a law of nature or natural phenomenon are so rare in my practice that I have never written one). However, patent attorney John Yankovitch says that when he must write claims that are directed to an abstract idea then he does part 2 of the test and adds significantly “more” to the claims. In that endeavor examples of significantly more are:
1. improvement to another technology or technical field, e.g. a mathematic formula applied in a specific rubber molding process;
2. improvements to the functioning of the computer itself;
3. applying the judicial exception with, or by use of a particular machine;
4. transformation or reduction of a particular article to a different state or thing, e.g. manufacturing fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure; and
5. performing an unconventional step.
Mr. Yankovitch stated that examples 1, 2, and 5 seem to have the most success at the USPTO.
These are good rules of thumb!
