Employing a Trademark Test to Determine When a Patent is ‘Directed To’ a Section 101 Judicial Exception

Codi Saxon

“A patentable issue matter inquiry [under Section 101] is at present also tricky and puzzling, and frequently leads to hugely questionable results. Consequently, it is appropriate to look at other means, these as a things-based tactic.” Less than U.S. trademark regulation and court docket precedent, figuring out irrespective of whether […]

“A patentable issue matter inquiry [under Section 101] is at present also tricky and puzzling, and frequently leads to hugely questionable results. Consequently, it is appropriate to look at other means, these as a things-based tactic.”

Less than U.S. trademark regulation and court docket precedent, figuring out irrespective of whether there is a probability of confusion requires weighing a number of variables (13 components to be precise), recognized as the “Dupont components,” set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The CCPA (Courtroom of Customs and Patent Appeals) is a predecessor court docket to the Federal Circuit. As pointed out by the Federal Circuit, not all the DuPont variables could be suitable or of equal bodyweight in a presented circumstance and any a person of the things may perhaps manage a unique case.

Underneath 35 U.S.C. §101, patent-suitable inventions include any course of action, machine, manufacture, composition of make a difference and any new and beneficial improvement thereof. There are, in addition, 3 judicially established exceptions to the wide recitation of Part 101: guidelines of mother nature all-natural phenomena and abstract suggestions. Normal phenomena is mentioned to include things like products of character. This write-up focuses predominantly on the summary tips exception, but also touches on legislation of mother nature and mathematical equations.

If the intention of Section 101 is to act as a gatekeeper, relatively than a roadblock, the components strategy looks suitable to use in a patentability examination.

The Have to have is Urgent

A discussion relating to possible distinctive means to establish regardless of whether a assert is directed to a judicial exception is significantly pertinent now, in light of the current condition of Federal Circuit jurisprudence on judicial exceptions. Of individual fascination, pending with the Supreme Courtroom is a Petition for Writ of Certiorari from Am. Axle & Mfg. v. Neapco Holdings LLC, 967 F.3d 1285 (Fed. Cir. 2020) (hereinafter, “American Axle”). American Axle appeals a split selection from the Federal Circuit denying a rehearing en banc. The Petition seeks, in portion, clarification from the Supreme Court docket as to the appropriate conventional for identifying no matter whether a patent declare is directed to a patent ineligible notion (the judicially made exceptions).

To refresh, the Alice two-portion check involves, in phase a single, the court docket analyzing “whether the statements at challenge are directed to a patent-ineligible notion. Alice Corp. v. CLS Financial institution Int’l, 573 U.S. 208, 217 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77 (2012)). If so, we then “examine the components of the declare to decide whether or not it consists of an ‘inventive concept’ enough to ‘transform’ the claimed summary concept into a patent-suitable application.” Id. at 221 (quoting Mayo, 566 U.S. at 72–73, 78).

I do not envy the Supreme Court docket, as it would appear to be hard, if not not possible, to manner one particular typical fitting all scenarios for deciding no matter if a patent assert is “directed to” a single of the judicially designed exceptions to §101. Having said that, maybe we do not need to try to fashion a person normal. Instead, this proposal looks to elements, the collective bodyweight of which ideas just one way or the other, much like the DuPont variables for probability of confusion in trademark legislation. Imagine “useful indicia” of patentable subject issue. This might perfectly be deemed an tutorial physical exercise, but the Supreme Courtroom does have the authority to make it take place.

To be positive, the components to take into consideration would need to be fleshed out, but under are some choices to consider, adopted by application to American Axle and Yabin Yu v. Apple Inc. (Fed. Cir. 2021) (hereinafter, “Yu v. Apple”). Like the DuPont components, not all the judicial exception things will be relevant in a specified situation, and a single or a subset of the things may be managing. Further, the aspects may possibly evolve or slide out with time and/or engineering adjustments.

Feasible Component A single: Regular Patentability

For illustration, one aspect might be no matter if a offered declare results in a variety of invention typically patentable, this kind of as a digital digital camera (Yu v. Apple) or the end result of an industrial producing method (American Axle). If so, then this component would weigh in favor of patentable topic issue being existing. Used to both equally Yu v. Apple and American Axle, this aspect should really weigh, probably heavily, in favor of acquiring patentable matter make any difference, but nonetheless matter, of course, to the other statutory necessities.

Possible Element Two: Physical Parts

A different illustration of a possible element is whether a plurality of distinct bodily elements, other than a standard-goal personal computer, are current. If existing, this aspect would weigh in favor of patentable topic matter. For the two Yu v. Apple and American Axle, this component would also weigh, potentially intensely, in favor patentability.

Achievable Component A few: Non-Obviousness

One more achievable aspect is irrespective of whether the claims have been held to be novel and non-noticeable around the prior artwork. If so, this variable would weigh in favor of patentable subject make any difference. Applied to both of those Yu v. Apple and American Axle, this aspect would weigh in favor of patentable topic matter. I comprehend the novel and non-clear aspect might be controversial, but it is an indicia of an advancement or new tactic about conventional methods.

Doable Element 4: Information

Another doable variable is regardless of whether a single or more of the adhering to are current in the claim: details collecting evaluation of knowledge reporting of results of analysis exhibiting effects or arranging information. If just one or additional are current, this aspect would weigh versus patentable subject matter subject. Applied to both Yu v. Apple or American Axle, this component would weigh in favor of patentable matter make any difference.

Probable Aspect Five: the ‘How’

Not that I endorse the Federal Circuit (inconsistent) need of the existence of a “how” in the declare, but a different feasible element is no matter if there is literally only a sought after end result with a complete lack of assert limits as to how the end consequence is achieved. If current, then this element would weigh versus patentable subject matter. Used to American Axle, this variable would weigh, on harmony, in favor of patentability. Software to Yu v. Apple is difficult. There is a recitation of a resulting “enhanced” digital graphic. However, it is entirely unspecified in the claim as to what style of enhancement, so it looks inadequate to qualify as an close consequence. In my see, this would be a Area 112 issue that is, regardless of whether “enhanced” is indefinite, with no any impact on the patentable subject matter matter inquiry.

Feasible Factor 6: ‘Well Comprehended, Schedule and Conventional’

A past recommended variable for a process or system of use is no matter if the claimed actions are perfectly recognized, program and typical if so, this element would weigh from patentable subject subject. As applied to American Axle, this aspect would plainly be in favor of patentable matter matter, considering the fact that the prior art did not educate dampening the two varieties of vibrations for the exact prop shaft liner. Nonetheless, as utilized to Yu v. Apple, there were being some factors of specific claim components that may body weight versus patentability, but not in a incredibly robust way. The other elements higher than weighing greatly in favor of finding patentable matter make any difference in Yu v. Apple must outweigh this aspect.


With regard to legal guidelines of nature and mathematical equations, if neither is expressly recited, it would weigh in favor of patentable topic subject. In that situation, a doable sub-component could be irrespective of whether there is crystal clear reliance on the exact for patentability. If so, then this component would weigh towards patentable subject make any difference, dependent on the toughness of the scenario for apparent reliance. If either a law of mother nature or a mathematical equation is expressly recited, a feasible sub-factor is irrespective of whether there is an usually fairly substantial degree of specificity in the assert. If so, then this issue would weigh in favor of patentable issue make a difference.

Jumpstarting the Portion 101 Dialogue

A patentable subject make a difference inquiry is at the moment too tough and perplexing, and usually prospects to highly questionable success. Therefore, it is ideal to contemplate other strategies, such as a factors-based mostly strategy proposed in this post. Having said that, the genuine reason of this report is to spark a dialogue concerning other practical ways to figuring out no matter whether a declare is directed to 1 of the judicial exceptions to Portion 101.

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Wayne Reinke

Wayne Reinke

is a very long-time companion with Heslin Rothenberg Farley & Mesiti, an IP boutique company with places of work in upstate New York. His apply around the decades has been diversified, in regions which includes patent, trademark (together with trademark portfolio administration), copyright practice, licensing, appeals, reexaminations, thoughts and litigation guidance. The the greater part of his apply has been in patent prosecution, such as success in overcoming patentable matter make any difference rejections. His patent practical experience spans a number of technologies regions, together with microelectronics, nanoelectronics, integrated circuit fabrication, as well as semiconductor design and style and fabrication. Furthermore, he has drafted and prosecuted patent applications involving pc-relevant innovations, such as artificial intelligence, equipment finding out, augmented fact, virtual equipment, application, graphical user interfaces, memory management, database administration, dispersed storage, on the web search systems, info buildings, information storage architectures, and on the web details stability encompassing firewalls and encryption strategies.

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