By Sinan Utku
PART 1 – Introduction, Quantum Computing Inventions, the Patent Eligibility Problem, and Recommendations
This article discusses the patent eligibility of quantum computing inventions under U.S. law in the context of several concrete examples. As such, the article is intended for workers in the field and assumes elementary quantum computing knowledge. It will be published in the Quantum Computing Report over five consecutive weeks. By the end of the series, readers should have a better understanding of an important hurdle in obtaining patent protection for quantum computing inventions in the U.S. and approaches to overcoming it. The parts of the article are as follows:
Part 1: Introduction, Quantum Computing Inventions, the U.S. Patent Eligibility Problem, and Recommendations
Part 2: Patent Eligibility of Quantum Computing Inventions and Example 1: Implementing a Pauli Z Gate
Part 3: Example 2: Implementing a Logical Qubit in a Surface Code
Part 4: Example 3: Entanglement Swapping
Part 5: Example 4: Shor’s Algorithm and Conclusions
The field of quantum computing is poised to advance dramatically in the near future. If expected advances actually occur, many problems that classical computing technologies cannot feasibly solve may become tractable. Given that the field is on the verge of fast and important technological advancements in this field, it makes sense to consider the patenting strategies that will be needed to protect them.
Not all innovations, however, are eligible for patenting. Patent granting jurisdictions have specific rules for determining patent eligibility. These are not harmonized across jurisdictions. Many practitioners believe the current U.S. rules for determining patent eligibility are particularly murky and lead to inconsistent results. They could accordingly operate as barriers to innovation and its commercialization in fast-moving technology areas like quantum computing. This article discusses these issues in greater detail below.
Recommendations for Quantum Developers
The following practices should be helpful to quantum developers in writing patent applications and claims that are patent eligible. These practices are discussed in further detail below in the context of particular quantum computing algorithms.
- Do not craft patent claims that recite a general result; try to the extent possible to draft them to recite specific steps to achieving the result;
- In particular, courts find claims that cover all methods for achieving a result to be particularly problematic. Particularizing the claim to specific hardware or steps carried out by specific hardware will help in successfully arguing patent eligibility.
- Providing enough detail in the patent application that will support an argument that the invention improves an existing technological process, or improves a device that carries out the invention, is helpful in demonstrating patent eligibility;
- In particular, discussing specific structural and operational improvements of the invention in the written description of the patent application will support arguments for patent eligibility of claims drawn to the invention;
- If the claims will include mathematical or physics formulae or general scientific principles, ensure that the claim recites specific applications of these in the context of a specific device or a specific method.
Historical Comparison of the Current State of Quantum Computing
Interestingly, one sign that important discoveries will likely occur in the near future in quantum computing is the great variation in approaches that are being undertaken by companies active in this field. A large number of significantly different technologies are being simultaneously investigated for use in a viable quantum computer. There are companies that are investigating quantum computers based on superconductor technology, photonics, trapped ions, quantum dots and other technologies. It is not clear whether eventually only one of these will prevail, or whether viable quantum computers will develop based on a plurality of different technologies in competition with one another. In this respect, the current state of the field bears some resemblance to the consumer-serving digital transmission technologies that were in development in the late 1980s. At this point in time, copper wire-based digital transmission technologies such as Integrated Services Digital Network (“ISDN”), Ethernet, various Digital Subscriber Line (“DSL”) technologies, as well as digital wireless technologies such as Global System for Mobile Communication (“GSM”), IS-54 and IS-36, and various wireless local area network technologies were being actively pursued. As we know now, some of these technologies reached dead ends and were abandoned, but many evolved to fit their respective current niches. But the activity in pursuing these different approaches drove a great amount of technological advancement and economic activity that has had a great impact around the world over the last fifty years. The current simultaneous pursuit of different technologies in developing a quantum computer may be a harbinger of comparable technological and economic expansion in the near future. Accordingly, it will be important to protect the inventions that will underlie this expansion.
Patent Eligibility
Patent eligibility is one of the basic substantive requirements to obtain a patent. Not all creative output can be patented. For example, a painting, or a design, is obviously not patentable and can be only protected using other types of intellectual property. More arguable issues of patent eligibility arise in connection with computer-implemented inventions. For example, most practitioners in most patent systems would probably agree that a methodology or computer program for controlling an apparatus in an industrially useful process should be eligible.[i] On the other hand, they would likely agree that a methodology or computer program that is specified at the level of abstraction of the manipulation of data in accordance with an algorithm, with no nexus to any specific industrial apparatus or process, should not be patentable.[ii] For example, a computer program directed to conversion of units, e.g., from inches to centimeters, even if it satisfied the other requirements of patentability, such as novelty and non-obviousness, should not be patentable. Otherwise, activities in entirely different fields that require such conversions, from biotechnology to mechanical technologies to hi-tech, might be pre-empted wholescale by patents issuing with broad and wide-ranging scope. There is a vast spectrum of computer-implemented inventions that span the gap between these extremes in which the issue of eligibility is less clear.
Legislatures and policy makers in different jurisdictions have devised respective laws and regulations that govern patent eligibility. In the U.S., 35 U.S. § 101, which quite generally states that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor”, is the governing statute. Although its plain language might suggest broad eligibility of inventions, the U.S. Supreme Court has restricted wide scale eligibility. During the latter part of the 20th century, the Supreme Court articulated judicial exceptions to patentability for abstract ideas, laws of nature and natural phenomena.[iii] Most recently, in several decisions from 2010 to 2014, the U.S. Supreme Court articulated restrictions on subject-eligible matter that were more onerous than what most practitioners had previously understood to be the case based on the previous set of Supreme Court cases.[iv] In particular, under the more recent Mayo/Alice framework, the court first asks whether the claims are directed to a law of nature, natural phenomenon, or abstract idea.[v] If the claims are so directed, the court then asks whether the claims embody an “inventive concept”—i.e., whether the claims contain “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.’”[vi]
Based on a large number of patent eligibility decisions from courts over the years, many practitioners believe the Mayo/Alice framework lacks precision and is fraught with uncertainty. It is useful to consider a couple of examples to illustrate what some practitioners think are counterintuitive outcomes of applying this test.
Claim Ineligible for Being Directed to a Natural Law
In American Axle, one of the claims in question was directed to a method of manufacturing a shaft assembly of a driveline system.[vii] It recited mechanical method steps and also relied on tuning using Hooke’s law from physics. Given these features, many reasonable practitioners thought that it should have been found eligible for patenting, because it accomplished a useful technological outcome. The court, however, ultimately found that it was not patent eligible. In particular, the court in step one of the Mayo/Alice framework found that the claim was directed to a general application of Hooke’s law. The court further found that the claim was not limited to any particular way of achieving this result, but instead broadly covered all methods and structures for doing so. The court accordingly found in step one of the Mayo/Alice framework that the claim was directed to an ineligible natural law.
The court in step two found that the claim failed to include any inventive concept that would transform it into eligible subject matter. In particular, the court found that the claim’s failure to include any steps relating to the specific design of the apparatus (which was a liner for damping two different vibration modes simultaneously in accordance with Hooke’s law) meant that there was no such inventive concept. In conclusion, the court found this claim to be ineligible for patenting.
Claim Ineligible for Being Directed to an Abstract Idea
In Symantec, one claim at issue was directed to a virus screening method in which a network node received data from either a calling party or a called party in connection with a call that was routed between these two parties.[viii] The innovation was the placement of the virus detection processing at a location other than that of either the calling party or the called party. This had the benefit of preventing either party from receiving virus-laden data.[ix] Further, this method avoided frequent updates of virus databases at each of the parties’ locations.[x] Many reasonable practitioners thought that the invention accomplished useful technological outcomes and should have been eligible for a patent. Yet the court ultimately found the claim to be ineligible.
In step 1 of the Mayo/Alice framework, the court found that the claim was directed to the well known concept of virus screening, which it stated was an abstract idea. The court in particular stated that performing virus screening was a long prevalent process in the field of computer technology and was routine and conventional. In its consideration of step two of the Mayo/Alice framework, the court did not find any redeeming non-conventional feature in the claim. In particular, it found that carrying out the abstract idea in the recited telephone network did not confer eligibility, because the telephone network merely functioned as a generic environment in which to carry out the well-known abstract idea. The court dismissed the invention’s benefit of eliminating reception of a virus by a second party, stating that this was conventional because it was achieved anytime a recipient screened an email for viruses and forwarded the email to a second recipient. The court found that the claim was not eligible for a patent.
Many practitioners disagreed with this outcome. They pointed out that the invention carried out a useful process in computer technology, namely, virus screening. They also pointed out that the invention improved previously known virus screening methods by carrying out the screening at a network node other than the location of the calling and called parties. These practitioners thought the invention was patent eligible.
[i] See, e.g., Diamond v. Diehr, 450 U.S. 175 (1981) (hereinafter “Diehr”) (holding that a computer-implementable process for molding raw, uncured synthetic rubber into cured precision products is patentable).
[ii] See, e.g., Parker v. Flook, 437 U.S. 584 (1978) (“Flook”) (holding that a claim directed to alarm limits determined in accordance with a mathematical algorithm is not patentable).
[iii] See Diehr, 450 U.S. 175; Diamond v. Chakrabarty, 447 U.S. 303 (1980); Flook, 437 U.S. 584.
[iv] Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014) (“Alice”); Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) (“Mayo”).
[v] Alice, 573 U.S. at 217 (citing Mayo, 566 U.S. at 77).
[vi] Id. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
[vii] Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 967 F.3d 1285 (Fed. Cir. 2020), reh’g en banc denied, 972 F.3d 1349 (Fed. Cir. 2020), cert. denied, 142 S. Ct. 2902 (2022) (“American Axle”).
[viii] Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016), cert. denied, 137 S. Ct. 1376 (2017) (“Symantec”).
[ix] U.S. Patent No. 5,987,610 col. 13 ll. 66–14 ll. 4 (“‘610 patent”).
[x] ’610 patent col. 1 ll. 18-23.
Sinan Utku is a Special Counsel, Covington and Burling LLP; Instructor, Bilkent University Law School. Nothing in this article should be construed as reflecting the official views, opinions, or positions of any organisation or institution with which the author is affiliated. The author writes in a personal capacity only.
September 11, 2026
