After a long series of cases in which the courts struck down patents for lack of eligible subject matter in the wake of Alice Corp. v. CLS Bank International, it appears that the pendulum may be swinging back in the direction of subject matter eligibility. The United States Court of Appeals for the Federal Circuit has ruled more favorably for patentees in several recent cases, such as Enfish, LLC v. Microsoft Corporation (claims to database-related software were directed to improving the functioning of the computer and hence were not directed to an abstract idea) and Bascom Global Internet Services, Inc. v. AT&T Mobility LLC (“[A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces”). Now an additional case — McRO v. Bandai Namco Games America Inc. — has similarly ruled in favor of eligibility, focusing on the centrality of preemption.

The issue of subject matter eligibility under 35 U.S.C. § 101 has in recent years rapidly evolved from an often academic question to a critical inquiry for patent applicants in many fields, such as software and the biological sciences. Subject matter eligibility is a threshold question — independent from other inquiries such as whether the invention claimed in the patent application is novel and non-obvious with respect to prior art — that addresses whether the subject matter in the claimed invention is of a type that should even be considered for patentability.

Concern about preemption had been a central, underlying rationale of the Court’s analysis in influential § 101 cases, such as Gottschalk v. Benson (denying patenting of “the basic tools of scientific and technological work”) and Alice Corp. v. CLS Bank (expressing concern for tying up future use of “building blocks of human ingenuity” and stating that “we have described the concern that drives this exclusionary principle as one of pre-emption”). However, the courts and the U.S. Patent and Trademark Office (USPTO) have often paid little heed to the principle of preemption. (See, e.g., the Patent Office’s Memorandum of May 4, 2016, stating that “[i]f applicant argues that the claim is specific and does not preempt all applications of the exception, an appropriate response would be to explain that preemption is not a standalone test for eligibility. Questions of preemption are inherent in and resolved by the two-part framework from Alice Corp. and Mayo.” As a result of such USPTO guidance, patent examiners often simply shrugged off applicant arguments that technologically specific claims posed no danger of preemption, replying that such arguments were not determinative and were inherently addressed by the two-step Mayo Collaborative Services v. Prometheus Laboratories analysis.)

In McRO (decided September 13, 2016), the Federal Circuit confirmed that preemption is a key factor when assessing the eligibility of an invention for patent protection under 35 U.S.C. § 101. The claims at issue in McRO dealt with 3-D facial animation in computer software. In reaching its decision that the claims were patent eligible, the Federal Circuit focused on the centrality of preemption, construing the claims as being limited to rules that evaluated sub-sequences of sequential phonemes, which “could not be satisfied by rules that only evaluate individual phonemes.” Accordingly, the court held that “[b]y incorporating the specific features of the rules as claim limitations, claim 1 is limited to a specific process for automatically animating characters using particular information and techniques and does not preempt approaches that use rules of a different structure or different techniques,” and accordingly concluded that claim 1 was not even directed to an abstract idea under step 1 of the two-part Mayo framework. The court also reiterated other maxims helpful to patent applicants and patentees — but often disputed by examiners — such as that the application of rules, or of mathematics, by a computer is not per se ineligible for patenting, and that “processes that automate tasks that humans are capable of performing are patent eligible if properly claimed.”

McRO should provide another arrow in the quiver of patent applicants or patentees seeking to establish subject matter eligibility — namely, by demonstrating a lack of preemption of a properly framed inventive concept.