Chau | IP
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Chau | IP

Computer Implemented Inventions— The Practical Application Test

The question of whether computer-implemented applications are patentable subject matter is one of the most interesting areas of patent law. Recently, the USPTO provided updated guidelines for determining patent eligibility. The steps go like this:

Step 1: Determine whether the claims fall into a patent eligible category (process, machine, manufacture, or composition of matter)

Step 2: Determine whether the claims are directed to a judicial exception (like abstract idea, mental process, fundamental economic practice, etc)

  • Step 2A.1: Determine whether the claim recites a judicial exception.
  • Step 2A.2: Determine whether the claim is integrated into a practical application.
  • Step 2B: Determine whether the claim includes “significantly more” than the the judicial exception.

All these steps are forced into the 2-step framework of Alice Corp. v. CLS Bank International, the 2014 case that rocked the patent world and drew a line in the sand that implementing a method on a computer was not enough to make claims patent eligible.

Computer-implemented claims can often include “functional” claim language that gets enhanced scrutiny during examination. Thus, the question of whether a claim is “integrated into a practical application” is often a critical one. But what does it even mean?

The first point that should be made is that “integrated into a practical application” is a term of art that has little to do with whether the invention is useful for something. Manipulating and visualizing data are often very useful for making all kinds of important decisions, but they usually aren’t enough for the purposes of Step 2A.2.

So, I want to delve a little deeper based on an interesting example the USPTO provided along with the 2019 guidance. They contrast two versions of a claim, one of which they determine is integrated into a practical application and the other isn’t.

Here is the version that fails the integration test:

A method for monitoring of traffic data through a network appliance connected between computing devices in a network, the method comprising:

collecting, by the network appliance, traffic data relating to the network traffic passing through the network appliance, the traffic data comprising at least one of network delay, packet loss, or jitter; and

comparing, by the network appliance, at least one of the collected traffic data to a predefined threshold.

the comparing step is considered a judicial exception (because at this level of generality it could be performed as a mental process). Still, it seems like it might be useful thing to do. So here are the reasons given for why it doesn’t count as a integrated into a practical application:

  1. The steps are presented at a high level of generality
  2. The first step “amounts to mere data gathering”
  3. The second step “merely automates the comparison”
  4. The steps “apply the exception using a generic computer component”

Now, here is the version they consider “integrated”:

A method for adaptive monitoring of traffic data through a network appliance connected between computing devices in a network, the method comprising:

collecting, by the network appliance, traffic data relating to the network traffic passing through the network appliance, the traffic data comprising at least one of network delay, packet loss, or jitter;

comparing, by the network appliance, at least one of the collected traffic data to a predefined threshold; and

collecting additional traffic data relating to the network traffic when the collected traffic data is greater than the predefined threshold, the additional traffic data comprising Netflow protocol data.

So why does this one work?

  1. The claim is “directed to a particular improvement in collecting traffic data”
  2. It “limits collection of additional Netflow protocol data to when the initially collected data reflects an abnormal condition”
  3. “The collected data can then be used to analyze the cause of the abnormal condition.”

Clearly, data collection by itself is not enough to integrate something into a practical application. The first version of the claim included data collecting, too.

The difference here is between using data as input for a process (which is considered insignificant pre-solution activity) vs. after the process (which depends on the solution and therefore is an improvement to the overall data collection process). I think the big difference here is that in a hypothetical conventional process, the step of collecting additional data wouldn’t exist.

Best Practices

With this in mind, here are a few best practices

  1. The added step should clearly be part of an overarching process (e.g., collecting additional traffic data is easily understood in terms of the greater process of collecting traffic data)
  2. The added step should depend on the judicial exception in a clear and non-conventional way

The original process (collecting data, making a comparison, and then collecting more data if the data meets a threshold) can easily be understood as part of an overall process for collecting traffic data. The non-conventional comparison step (which also happens to be a judicial exception) is easily understood as an improvement to this conventional process, where a part of the action (collecting the additional data) clearly depends on the non-conventional step.

There is no bright line test for whether we have achieved these objectives. But let’s consider a few alternative final steps to try and flesh out how it can be accomplished:

A. displaying a result of the comparison on a user interface

B. developing a network traffic recommendation based on the comparison

C. rerouting a portion of the network traffic when the collected traffic data exceeds the predefined threshold

Option A doesn’t get us very far because displaying traffic data is something likely to happen in the conventional scenario (i.e., regardless of the comparison step) and yet it somehow does not seem to fundamentally change the practice of collecting data. If the practice we are trying to improve is displaying data (as opposed to collecting it), we would probably need more detail about how the process of displaying data occurs.

Option B is subject to a similar critique. Introducing the concept of the network traffic recommendation in the final step takes the claim in a new direction. This raises some ambiguity about the overall purpose of the claim. What are we really trying to do, and when does it get done? Option B doesn’t give a clear enough idea of what the overarching practice is that we are improving, nor does it specify how that practice changes based on the comparison step.

Option C shows an example of a final step that provides a clearer application. Unlike the original, the purpose here isn’t to collect data. It is to route the traffic. But that is a physical change that is easier to articulate than the previous two examples. Also, the rerouting clearly depends on the result of the comparison (i.e., it only happens when the traffic is above the threshold).

So, to sum it all up. If you want your claim to pass the Practical Application Test, make sure you can clearly articulate what the practice is that is being improved (and that it doesn’t seem intangible like displaying data or making a recommendation). Then, make sure to describe the specific way in which the practice depends on the steps that trigger the judicial exception.

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Think outside the box about intellectual property

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Redbeard

Redbeard

Patent Attorney, Crypto Enthusiast, Father of two daughters

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