Death and Taxes and Patent-Ineligibility of Business Methods

For all the kvetching about the frustrating subjectivity and unpredictability of applying the Mayo/Alice patent-eligibility test, here is a case showing that there is a zone of certainty in determining patentability under 35 U.S.C. § 101. In In re Greenstein, 2019-1521 (Fed. Cir. Sept. 6, 2019) (per curiam; panel was Prost, Newman, and Moore) (non-precedential), the Federal Circuit issued a reminder that clients can be counseled with some certainty that business methods, however new and different, are not patent-eligible if the improvement is to a business process, and not to technology.

Mark Greenstein, proceeding pro se, appealed the USPTO examiner’s rejection under §§ 101, 102, and 103 (the § 102 and § 103 rejections were not reached in the present decision), affirmed by the Patent Trial and Appeal Board (PTAB), of the following claim:

One or more computers with associated software programmed to:

receive, at a processor and store using one or more storage devices employing memory, data corresponding to invested amounts and using one or more computers with associated software including algorithms and employing such software and algorithms to:

utilize a projected amount of income at a future date for at least one person;

automatically adjust the amount such person saves incorporating the projected income amount so that achieving such projected in-come amount is more likely; and

invest the saved amounts saved in one or more investment vehicles.

Concerning the § 101 rejection, the PTAB held, and the Federal Circuit agreed, that under Alice step 1, this claim was directed to the patent-ineligible “abstract idea of ‘[a]djusting the amount a per-son saves and choosing investments for the saved amounts, with the goal of saving enough for retirement.’” Alice step 2 could not save the claim, because the method was implemented with generic computing technology.

Greenstein made things mildly interesting by arguing that his claim should survive under Alice step 2 because his claimed step of “utilize[ing] a projected amount of income at a future date for at least one person” was allegedly the basis for commercial success. Even if true, said the court, “this is insufficient to transform the claims into a patent-eligible application.” Citing BSG Tech LLC v. BuySeasons, Inc., (Fed. Cir. 2018), the court explained that use of an ineligible concept cannot be the inventive concept that makes a claim patent-eligible. As the court said in Synopsys, Inc. v. Mentor Graphics Corp., (Fed. Cir. 2016), “a claim for a new abstract idea is still an abstract idea.”

Lessons for Practice

I often hear from clients or potential clients wanting to patent a new business idea. Other forms of intellectual property protection will not suffice. Yet often the most practical advice is that time and money spent on a patent application will not be a good investment.