Patent applications increasingly encounter subject matter eligibility ­rejections under 35 U.S.C. Section 101, particularly those applications directed to software and business methods. These rejections can be difficult to overcome, even for experienced patent practitioners due to lack of clear precedent and continuously evolving case law. The Supreme Court decisions in Mayo v. Prometheus (US 2012), and Alice v. CLS Bank International (US 2014), set forth the current framework for determining patentable subject matter eligibility under Section 101. Under this framework, step one of the test asks whether the patent relates to traditional categories of inventions that are known to be exceptions to patent eligible subject matter. Most often, the question at step one is whether the invention relates to an abstract idea or an item found in nature. If the answer is no, then the inquiry ends and the subject matter is viewed as patent eligible. If the subject matter relates to an abstract idea or item found in nature, the question at step two is whether the elements of the claim, alone and in combination, act to transform the abstract idea into a patent eligible application. At step two, there is a search for an inventive concept or some element that ensures that the claim amounts to ­”significantly more” than just an abstract idea. This framework has created much uncertainty in the law, as it is still unclear what constitutes an abstract idea and what is required for a claim to provide ­significantly more than an abstract idea.

While it is easy to find case law examples of software and business methods that were found to be patent ineligible under the Alice framework, cases in which software or ­business methods are upheld under Section 101 are far less common. However, ­several recent Federal Circuit decisions have ­provided much needed guidance for patent applicants who hope to overcome subject matter eligibility rejections.

In Enfish v. Microsoft (Fed. Cir. 2016), Enfish's challenged patents related to ­logical models for computer databases. While conventional computer databases include multiple tables for storing different types of information, Enfish's patents relate to what Enfish referred to as a ­”self-referential” ­database in which all types of data are stored within a single table. As a result, Enfish's database provides the benefits of faster searching of the database and more efficient data storage. In determining whether the patents were related to patent eligible subject ­matter, the Federal Circuit found the claims to be patent eligible at step one of the Alice framework, finding that the claims did not relate to abstract idea. The court reasoned that the Enfish database was not merely an abstract idea, such as a known mathematical formula or economic practice, combined with generic or conventional computer systems. Instead, the court explained that the patents' claims were directed to a specific improvement in the way that computers operate, by ­improving the manner in which computers store and retrieve data. Thus, the court in Enfish showed that not all patents ­directed to business or software methods are ­necessarily abstract ideas.