CALL US: 206.533.3854
CALL US  206.533.3854
AEON Law logo full color transparent
By Sérgio Valle DuarteWikidata has entry Q16269994 with data related to this item. - Own work, CC BY 3.0,

Commercial Success Isn’t Relevant to an Alice Analysis of Patentability

Commercial success
Doesn’t mean you can patent
Something that’s abstract

The Federal Circuit has held that the commercial launch of a product is irrelevant to an analysis of whether the product is eligible for patent protection.

The plaintiff, Mark Greenstein, appealed from a decision of the Patent Trial and Appeal Board (PTAB) which affirmed the rejection of his patent application by the US Patent and Trademark Office (USPTO).

The application was rejected due to ineligible subject matter under 35 U.S.C. § 101, as anticipated under 35 U.S.C. § 102, and as obvious under 35 U.S.C. § 103.

The application related to automated systems for personal financial planning:

It describes the automatic adjustment of an individual’s savings, and the investment thereof, to increase the probability of achieving a projected income in retirement. The claimed systems utilize computers to receive, store and adjust savings and investment data.

The PTAB held that the claims were directed to the abstract idea of “[a]djusting the amount a person saves and choosing investments for the saved amounts, with the goal of saving enough for retirement.”

As the court noted in an earlier decision involving the same plaintiff, in its 2013 Alice decision, the US Supreme Court

set forth a two-step test to determine patent eligibility under § 101. First, we determine whether the claims are directed to an abstract idea. If so, the claim may still be patent-eligible if it contains an “an inventive concept—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’”

The plaintiff argued that his alleged invention “was the basis for the successful commercial launch of a new product, demonstrating its material advantages to persons in the relevant market.”

The court held that this was irrelevant:

It is well-settled that a claimed invention’s “use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”

The case is In Re: Mark Greenstein.

Related Articles

Supreme Court: No Time Limit on Monetary Recovery in Copyright Cases

The US Supreme Court has ruled in favor of Sherman Nealy, a record producer who sued Warner Music for copyright infringement over a 2008 song by ...
Read More

Patent Office Requests Public Comment on AI Prior Art

The US Patent and Trademark Office (USPTO) has published a request for comment (RFC) on “how AI could affect evaluations of how the level of ordinary skills ...
Read More

FTC Bans Employee Non-Compete Agreements

The Federal Trade Commission (FTC) has voted to approve a proposed rule that would ban employers from using non-compete agreements with nearly all employees. The ...
Read More

Let's work together.

Contact us to set up a meeting with an attorney or team member.

Stay Informed

Sign up to receive Patent Poetry—a monthly roundup of key IP issues in our signature haiku format. Four articles (only 68 syllables); zero hassle.



Artificial Intelligence

Blockchain & Cryptocurrency

Computer Technology & Software

Consumer Electronics

Electrical Devices



Mechanical Devices

Consumer & Retail Products

Hardware & Tools

Toys & Games



Chemical Compounds

Digital Health

Healthcare Products



Books & Publications

Brand Creation

Luxury Products

Photography & Video

Product Design