In what is hopefully a rogue decision, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) has used parts of the test drawn up by the US Supreme Court in the Alice Corp. v CLS Bank case (relating to computer implemented inventions) to rule that a patent claim directed to a magnetic resonance imaging (MRI) machine is not eligible for patent protection because it is an abstract idea.
As a reminder, the Alice Supreme Court case was feared to be substantially the end of the patenting of computer implemented inventions in the US, although there have been a couple of encouraging Federal Circuit decisions since then, which I reported on last year. Following Alice, the USPTO have drawn up a two step test which seeks to determine whether or not a patent claim is directed to eligible subject matter. The first step is whether the claim is directed to a process, machine, manufacture or composition of matter. These categories are all examples of patent eligible subject matter. An MRI machine is clearly a machine and so passes the first step of the test, however the PTAB appear not to have applied this step of the test and not to have taken this “apparatus” language of the claim into account when assessing the second step of the test.
The second step of the test (as a development from the Mayo v Prometheus Supreme Court case) is to ask if the claim is directed to a law of nature, a natural phenomenon or an abstract idea (even if the claim passed the first step). These categories are judicially recognised exceptions to patentability. At this stage, the PTAB found the claim to the MRI machine to be an abstract idea. The logic behind this seems to be that the claimed MRI machine implements a method of classifying images acquired by the MRI machine for the purposes of subsequent display and the PTAB deemed this to be an abstract idea.
This is worrying because an MRI machine clearly is not an abstract idea but a concrete object. Possibly if the claim was directed to a method of analysing images acquired by an MRI machine then it may be arguable, depending on the exact steps recited in the claim, that this could be found to be an abstract idea.
The final part of this second step is to ask if the claimed invention adds “significantly more” than the judicial exception. If so, the claim is allowable as eligible subject matter. With the MRI machine, the PTAB found the claim to be just relating to image classification, which they did not consider to be an inventive concept that added significantly more than the judicial exception.
Furthermore, they concluded that the implementation of this classification on an MRI machine was not enough to transform this abstract idea into an inventive concept. This is similar logic to that taken by the European Patent Office when finding computer implemented inventions to lack inventive step, i.e. Examiners state that the mere implementation of an abstract idea on a general purpose computer is not enough to give the claim an inventive step, even if the abstract idea is new.
However, in Europe (where only “technical” features are taken into account when assessing the inventive step of a claim) there would be a good argument that the processing of MRI images is “technical” and would then stand a better chance of having a patent granted.
My hope is that the PTAB have erred significantly in their judgement in this case and that future cases will find in favour of claims directed to apparatus and similar machines. Many inventions these days are the result of a computer programme making a machine operate in a new and non-obvious way, and thus should be eligible for patentability. It would be very worrying if this were to be curtailed.