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A new patent eligibility test from the USPTO – a step in the right direction?

10 February 2015

The USPTO has recently issued guidelines for deciding whether a claim is eligible for US patent protection. The guidelines are welcomed by those considering patenting computer-implemented inventions in the US because they clarify the brief and unclear guidance issued shortly after the US Supreme Court’s Alice Corp. v. CLS bank International decision of 19 June 2014. This decision ruled that that Alice’s patent was invalid on the basis that it was an abstract idea that had simply been computerized.

A test has been established in the US to determine whether an invention is suitable for patent protection, or is too nebulous an idea or abstract in nature to be eligible for patentability.

The first step of the test is to determine whether a claimed invention is directed to a law of nature, a natural phenomenon or an abstract idea. If the invention is not directed to one of these exceptions, it qualifies as eligible subject matter. However, if it is determined that the invention is directed to an exception, the second step of the test is to determine whether the claimed invention includes additional elements that amount to significantly more than the exception. According to the guidelines, this part involves determining whether the claimed invention recites an eligible application of the exception – i.e. whether additional features describe a product or process that applies the exception in a meaningful way. This test edges the USPTO’s approach a little closer to the EPO’s test for determining whether a claimed invention has technical character.

Note, however, that the EPO also has a further test for an invention which must provide a technically inventive solution to a technical problem. No such technical requirement exists in the US for the inventive step test.

The USPTO has provided a number of specific examples of subject matter relating to abstract ideas that are accompanied by reasoning as to whether the examples are eligible or ineligible for patent protection based on the new two-step test. The examples are based on decided court cases.

A notable example which is found to be eligible is a computer system for generating a webpage which, under certain circumstances, displays composite information from a host’s webpage and an advertiser’s webpage. The claimed invention addresses a problem which is specific to computer networks, rather than relating to the application of a known business principle on a computer network. It was therefore found to pass the first step of the test to qualify as eligible subject matter. Interestingly, the USPTO note that even if the claimed invention failed the first step of the test, the claim would nevertheless pass the second step since the claimed features amount to an inventive concept for overcoming an internet-centric problem. This example illustrates key differences in the approaches adopted by the EPO and USPTO concerning patentable subject matter. Although the EPO would consider the claim to have technical character (and hence be patent eligible in USPTO terms), it would likely not be deemed to solve a technical problem, and would therefore not be patentable. So, the USPTO seems to remain more generous to patentees than the EPO, in spite of the apparent higher hurdles for eligibility stemming from the Alice decision.

A further interesting example given in the new USPTO guidelines which was found to be ineligible is a method for generating a device profile for use in digital imaging processing. The device profile includes spatial as well as colour properties of a source device. The claim itself is not limited to use of the device profile, and it is therefore concluded that the claim does not extend beyond gathering and manipulating data, and so it fails the first part of the test. However, with a minor amendment to provide technical character in the form of, say, a computer, such a claim would probably be patentable before the EPO given that the invention results in an improved device profile which ultimately enhances image processing, and therefore solves a technical problem.  We suspect the same would be true in the USPTO.

The take-home message is that applicants must meet certain minimum requirements, both in the USPTO and EPO, for describing and defining their inventions in terms of tangible, technical components (such as computers and processors) which carry out the inventions in order better to meet the requirements for “technical character” and “patent eligibility” in the EPO and USPTO respectively.


Amy Bishton and Karl Barnfather
Electronics, Physics & Computing

If you require further information on anything covered in this briefing, please contact Amy Bishton (; +44 1926 310 700) or your usual contact at the firm.

This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Withers & Rogers LLP, February 2015