Supreme Court patent update: Phonetic alphabet fails patent-eligibility test

January 03, 2019
Patterson Thuente IP

Despite what movies and television shows might suggest, not every great idea is worthy of—or, more importantly, eligible for—a patent. The inventor of a new phonetic alphabet learned this lesson the hard way.

Sound idea denied patent

The claimed invention was a phonetic symbol system formed by phonetic symbols using letters of the English alphabet. The patent application distinguished the system from existing phonetic symbol systems that use diacritics and symbols that aren’t English alphabet letters, such as accents and other symbols.

Denied in blocks image

The U.S. Patent and Trademark Office (USPTO) rejected the patent application after finding that the symbols didn’t fall within one of the four categories of invention laid out in the U.S. Patent Act. The Patent Trial and Appeal Board agreed with the USPTO that “defining phonetic symbols in language, using strings of English letters,” is a patent-ineligible abstract idea. The inventor appealed.

Eligibility rules spelled out

The Patent Act provides that inventors may obtain patents for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” All of the categories except “process” require an invention to exist in some physical or tangible form.

For a machine, the invention must be a “concrete thing, consisting of parts, or of certain devices and combination of devices.” A manufacture must be a tangible article given a new form, quality, property or combination through man-made or artificial means. And a composition of matter requires the combination of two or more substances; it includes all composite articles. Because the phonetic symbol system didn’t satisfy any of these definitions, it didn’t meet the physical or tangible form requirement.

The court also found that it didn’t qualify as a process. A process is any process, art or method that includes a new use of a known process, machine, composition of matter or material. It can be an act or a series of acts, performed on something to be transformed and reduced to a different state or thing. The symbol system, however, didn’t require an act or step or anything that must be performed.

Court wouldn’t hear of it

Having found the system to constitute an abstract idea, the court then considered whether it contained any “additional features” embodying an inventive concept that would make it patent-eligible. But the court found the invention merely encompassed strings of English letters representing sounds. No inventive concept rescued the invention from patent ineligibility.

In re Wang, No. 17-1827, June 20, 2018, Fed. Cir.

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