April 26, 2019
What is the difference between a patentable invention and an abstract idea? Our European Patent Attorney Kati Vesterinen has investigated the new examination guidelines of the United States Patent Office, whose aim is to clarify invention patentability assessment in the US.
”An abstract idea cannot be patented”
According to the United States Patents Act, abstract ideas cannot be patented. In practice, they cannot be patented in Europe either, because an invention must produce a technical effect. However, patentability is assessed in different ways in the United States and Europe. This has introduced an additional challenge for applying for a patent and anticipating the patentability of inventions, especially in the United States. In general, patentability in the US is assessed on a broader basis than in Europe.
A few years ago the United States Patent and Trademark Office (USPTO) published guidelines on how abstract ideas and patentability should be examined. In practice, however, the guidelines still allowed individual patent examiners to consider how to apply the guidelines, as a result of which some of the USPTO’s decisions have been not only unpredictable, but also inconsistent with respect to each other.
At the beginning of this year, new, clearer guidelines for defining abstract ideas entered into force. It is now hoped in the IP field that both patent attorneys as well as patent applicants could better trust in the way how abstract ideas are interpreted at the United States Patent and Trademark Office.
”User interfaces, artificial intelligence and machine learning call for special attention”
When USPTO’s patent examiner starts to examine a patent application, they must check that the invention is not an abstract idea, in addition to other patentability criteria. The aim is that the use of a more specific examination process will produce mutually consistent results instead of patentability depending on the opinion of a single examiner and the interpretation of the guidelines varying between individual examiners.
Examples of abstract ideas are mathematical concepts that people can think in their own minds. However, if the ideas provide a technical effect, they, too, can be patentable. Abstract ideas also include methods related to the organisation of human activity, such as social activities, following instructions and mental processes, such as observing, evaluation and making decisions.
Important technical fields of patenting, in which the examiner may interpret an invention as an abstract idea, are, for example, user interfaces, artificial intelligence and machine learning. In such fields, it is especially important that the risk to interpret the invention as an abstract idea is carefully ruled out when preparing the patent application. However, an optimal application is drafted in such a way that the applicant has leeway for further development and the invention is also protected as broadly as possible in the future.
”The word choices are decisive for patentability”
The patent attorneys’s experience and competence play a decisive role in whether a patent is granted for the invention. If, for example, the invention relates to rearranging graphic icons on a touch screen, the invention can be interpreted as an abstract or a non-abstract idea, solely depending on the exact wording in the application.
If the invention can be classified as an activity of the human mind, the danger of interpreting the invention as an abstract idea is particularly high. Although the invention as such can be good, valuable and also patentable, poor wording may lead to a situation where no patent is granted for it. In the end, everything is crystallised in how the application has been drafted.
Assuming, for example, that the invention relates to rearranging icons on a touch screen according to how much the user uses a specific icon, the invention must be linked with a physical device, such as a touch screen and other concrete elements that may be connected with the invention. However, if the application has been drafted by merely defining how much icons are used and determining on the basis of their use how important a specific icon is for an individual user, the process can be performed in the mind without integrating it into a practical application. In that case, the invention would not be patentable.
Therefore, in order to have a patent for the invention, the invention must be somehow integrated into practical application.