“It appears that most examiners in the finance art units 3691 to 3697 consider any improvement to a computer implemented financial process to be nothing more than an abstract idea.”
Artificial Intelligence (AI) patents have made a strong comeback under the new 2019 Revised Patent Subject Matter Eligibility Guidance. As the first graph above shows, allowances per office action have gone from an average of 15% before the guidance to 38% after the guidance. The increase occurred almost immediately after examiners were trained on the new guidance in January. For AI inventors concerned about the impact of the old Alice guidelines on the examination of AI-related applications, it looks like more hopeful times are ahead.
The situation is grimmer for finance patents. The new guidance has not had any significant effect on allowances per office action. I reviewed a number of recent office actions under the new guidelines to see where the problem might be. It appears that most examiners in the finance art units 3691 to 3697 consider any improvement to a computer implemented financial process to be nothing more than an abstract idea. It doesn’t matter how novel or sophisticated the algorithms might be. The Patent Trial and Appeal Board has been backing up this examiner perspective, with the affirmance rate for related appeals being more than 90%.
Demonstrating Improved Function
Inventors in the field of finance, therefore, need to develop their inventions to the point where the functioning of the computer itself is improved. The improvement has to be significant enough so that it is patentable all by itself irrespective of whether or not it’s applied to a finance problem. For example, if an improved financial process uses AI, the AI itself needs to be improved to the point where it can stand alone as an invention. Once the invention has been developed to this point, it’s then up to the patent attorney/agent to draft the patent application so that it will be classified as AI, not finance.
Inventors can find out where their patent applications have been classified within about two months after filing. That’s how long it takes to come back from the classification contractor. Inventors can then ask their attorneys/agents to check the USPTO’s private PAIR database to determine the class of an application, as well as the art unit to which it has been assigned. If they were targeting AI, it should be in class 706 and assigned to one of the art units 2121 to 2125. If instead it was classified as finance, it will be in class 705 and assigned to one of the art units 3691 to 3697. If that happens, it might be worthwhile to consider redrafting and refiling to get in an art unit more appropriate to the underlying technological invention.
Ask the USPTO
Those who already have finance patents pending may want to attend the USPTO’s upcoming Business Methods Partnership Meeting on April 2 at either their Alexandria, Virginia, Office or their Dallas, Texas Regional Office. This would be an excellent time to have candid discussions with USPTO personnel on what is or is not considered statutory in the field of finance.