A recent decision of the U.S. Court of Appeal for the Federal
Circuit highlights the importance of the description in a patent
specification and, in particular, that descriptions lacking
technical detail to explain the invention will not stand up to
scrutiny.
Patents can only be obtained for eligible subject matter such as
a process, machine, manufacture, or composition of matter. Patents
cannot be obtained for abstract ideas. The U.S. Supreme Court in
Mayo and Alice set out a two-step test for
subject matter eligibility.1 The first step
asks whether claims of a patent are directed to a patent-ineligible
concept. If the claims are directed to a patent-ineligible concept,
then the analysis proceeds to the second step. The second step asks
whether the claim elements contain an "inventive concept"
sufficient to "transform" the nature of the claims into a
patent-eligible application.
