Pablo Meles, Of Counsel, Espinosa Martinez

The European Patent Office (EPO) issued guidelines for Nov. 1, 2018, that in many ways summarizes the direction and guidance of U.S. jurisprudence and USPTO policy for patent eligibility for computer implemented inventions. Much of the recent U.S. guidance evolves from the 2014 U.S. Supreme Court decision Alice v. CLS Bank International (573 U.S. 208) concerning a computer implemented electronic escrow service for facilitating financial transactions where the patent claims were found invalid as being drawn to an abstract idea. Patent ineligibility was found using a two-step process. The first step determines whether a patent claim is an abstract idea such as an algorithm or a method of computation. If the patent claim includes an abstract idea such as an algorithm, then the patent eligibility process must go to the second step and determine whether the patent claim adds “significantly more” to the idea that embodies an inventive concept. Although “significantly more” really does not provide much concrete guidance, the court did find that a mere instruction to implement an abstract idea on a computer or the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.

Since Alice, although a significant majority of cases reviewed by the Federal Circuit have found computer implemented inventions patent ineligible, the pendulum has started swinging slightly in the direction of eligibility by clarifying what they meant by “something more” with a few cases where patent eligibility was found. See Thales Visionix v. United States, Amdocs (Israel) v. Openet Telecom, McRO v. Bandai Namco Games America, Bascom Gobal Internet Services v. AT&T Mobility, Enfish v. Microsoft,  DDR Holdings v. Hotels.com or Research Corporation Technologies v. Microsoft.

The USPTO also issued the Berkheimer Memo on April 19, 2018, (based on the Federal Circuit opinion in Berkheimer v. HP) providing examination guidance as to what would be considered “significantly more” particularly when “an additional element (or combination of elements) is not well understood, routine, or conventional.” In such instances, the examiners can only use evidence falling in four specific categories to assert that the element is well-understood, routine, or conventional, namely an express statement in the specification; a court citation; a citation to a publication; or a statement by the Examiner taking “Official Notice” which can be rebutted.

All of the precedent above suggest that patent claims directed towards computer implemented inventions should be drafted keeping in mind a contemplated defense against a eligibility Section 101 attack by focusing on a specific technical solution and advantages provided by the invention present by a specific technical problem.

In a similar vein to Alice and the Berkheimer Memo, the EPO guidelines for eligibility of computer implemented inventions include a first prong of determining if the claimed subject matter has a technical character and a second prong of determining if all features contributing to the technical character are taken into account for assessment of inventive step which is assessed by the well-established “Problem and solution approach for claims comprising technical and nontechnical features.”

The EPO guidelines suggest that tying or tracking the method claim to the technical purpose explicitly or implicitly meets the eligibility requirements for computer-implemented inventions. With respect to mathematical methods, a specific technical implementation of the mathematical method can be patent eligible, for example, if claims are directed to technical considerations of the internal functioning of the computer. This is similar to the standard in Enfish where claims were “directed to a specific improvement to computer functionality” not directed to an abstract idea under step one of Alice. 

The EPO further guides that a generic technical implementation or claims alleging that the mathematical method is algorithmically more efficient than prior art mathematical methods fails to solve the problem should be avoided.

With respect to artificial intelligence and machine learning, the EPO guidelines will generally find such claims by default to be of an abstract mathematical nature since they generally define computational models and algorithms for classification, clustering, regression, and dimensionality reduction. To counter such adverse assessments, the applicant in a European application should direct claims that establish a causal link to the technical purpose. The EPO guidelines clarify that artificial intelligence and machine learning inventions are subject to the same standards as computer implemented inventions and therefore the problem and solution approach for claims should continue to be applied to these claims as before. In conclusion, the standards in Europe and the United States appear to be merging or drifting toward harmonization and providing a source of guidance in either direction.

Florida Board Certified in Intellectual Property Law, attorney Pablo Meles is Of Counsel with the Miami law firm of Espinosa Martinez. He focuses on patent prosecution and patent litigation support and may be reached at [email protected].