US News: Limitation on Patentability of Algorithms
While Europe is waiting for a decision in the case G3/08 before the Enlarged Board of Appeal of the EPO and the US is waiting for a decision in re Bilski, the Board of Patent Appeals and Interferences of the USPTO has issued a precedential opinion (444.34 kB) on the patentability of algorithms.
A two-part inquiry is introduced for algorithms for determining whether the claimed subject matter is patentable or not. The inquiry comprises:
- Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., “not a mere field-of-use label having no significance”)?
- Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either “in all fields” of use of the algorithm or even in “only one field?”
If the machine (or article of manufacture) claim fails either prong of the two-part inquiry, then the claim is not directed to patent eligible subject matter.
The inquiry obviously intends to weed out claims directed at generic applications (or no specific application at all) of algorithms. The first prong forces an applicant to define an application for the algorithm and urges him to be particular and not too abstract (“not a mere field-of-use label having no significance”). The second prong again makes sure the application is not defined too broad, as even limiting to a single field (“only one field”) is considered unallowable.