Subject-Matter Eligibility at the CAFC and PTAB: Q1 2018

As part of my ongoing research into subject-matter eligibility, I have been monitoring the decisions issued by the U.S. Court of Appeals for the Federal Circuit and the Board of Patent Trials and Appeals of the U.S. Patent Office. Over the past several years, I have read every decision issued by these authorities that deals with 35 U.S.C. § 101 and classified those decisions by outcome and technology area. When the Supreme Court first altered the landscape for this issue by its Mayo and Alice decisions, there was significant uncertainty whether a given claim would survive a subject-matter eligibility challenge. Some uncertainty persists, but patterns for patent claims that survive and patent claims that don’t are emerging. Looking at the decisions issued by the CAFC and the PTAB during the first quarter of 2018 may illuminate some of these patterns.

A breakdown of the decisions, including their technology area and outcome, is shown in the following chart:

Technology AreaDecisions Rejecting ClaimsDecisions Approving ClaimsTotal Decisions
Gaming Arts19019
Software/Business Methods41441455

As can be seen, the overwhelming majority of the decisions involve patent claims for software- and business-method-related inventions. And, of those decisions, roughly 90% result in the claims being rejected. Biotechnology- and pharmaceutical-related inventions are less frequently implicated, and are somewhat more likely to be approved, with roughly 20% being approved. Finally, there are a smaller number of decisions involving the gaming arts, like customized wagering, video, and board games, where no claims were found patent-eligible during the relevant period.

The kinds of claims that tend to be eliminated in the software and business method fields are frequently in the form of a conventional business practice where the claimed advance is straightforwardly implementing that practice on a computer. Other rejected claims in that field often involve collecting information that was previously available, processing that information using a computer, and storing or displaying the result. In biotech and pharma, the claims that tend to be eliminated usually involve detecting a naturally occurring condition and giving a diagnosis based on that condition, sometimes with a treatment step that does not represent a change to how the condition would have previously been treated. Another common group in this field are claims to naturally occurring substances or collections of such substances where the combination does not change the characteristics of the individual components. And the claims in the gaming arts tend to involve changes to the way a game is played without requiring a corresponding, significant  change to the equipment used to administer the game.

Claims that are approved in the software and business method areas often result in an improvement to the way the computer itself functions, sometimes because the problem addressed is unique to computers or computer networks. Other such claims may cause a change in the operational state of a machine controlled by the computers that improves an industrial process as a result of the computer control. Though less frequent, some software claims that survive rely on a specific, new way of displaying results, usually with real-time calculation and updates, that enable a user to better understand large volumes of complicated information. Finally, successful claims in the biotech and pharma fields usually require a specific change to the way a condition is treated as a result of a detected condition, require the formation of a non-naturally occurring substance, or change the characteristics of the individual components of a compound as a result of their combination.

Of course, the way patent-applicants characterize their own inventions in their applications can significantly affect how a decision-maker views the invention, particularly for edge cases where the outcome is less clear. Accordingly, patent-applicants may consider being more carful than ever what is said about the advancement presented in the application, and what is and is not included in a patent claim, and patent challengers may scrutinize an application’s text to improve the likelihood of success in overcoming or mounting a challenge to patent claims based on their subject-matter eligibility.

The information you obtain at this site is not, nor is it intended to be, legal advice. You should consult an attorney for advice regarding your individual situation.