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USPTO Issues Revised Patent Subject Matter Eligibility Guidance


February 8, 2019
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The U.S. Patent and Trademark Office Is Working to Clarify Patent Subject Matter Eligibility Guidance

The U.S. Patent and Trademark Office (USPTO) is working to clarify when inventions are eligible for patent protection. Early last month, the agency published revised guidance for subject matter eligibility under 35 U.S.C. § 101.

USPTO Issues Revised Patent Subject Matter Eligibility Guidance
Photo courtesy of STIL (Unsplash.com)

“These guidance documents aim to improve the clarity, consistency, and predictability of actions across the USPTO,” USPTO Director Andrei Iancu stated. “The USPTO will provide training to examiners and administrative patent judges on both documents to ensure that guidance is being properly administered.”

U.S. Supreme Court’s Alice/Mayo Test

The first step of the USPTO’s eligibility analysis entails considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. § 101: process, machine, manufacture, or composition of matter. The second step involves determining whether the claimed invention also qualifies as patent-eligible subject matter. The three judicial exceptions that the courts have found to be outside of, or exceptions to, the four statutory categories of invention are abstract ideas, laws of nature and natural phenomena (including products of nature). 

In accordance with the U.S. Supreme Court’s decisions in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. _, 134 S. Ct. 2347 (2014) and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66  (2012), a patent claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. Stated another way, the first part of the Alice/Mayo test is to determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception).  If the claims are directed to a judicial exception, the second part of the Mayo test is to determine whether the claim recites additional elements that amount to significantly more than the judicial exception. 

2019 Revised Patent Subject Matter Eligibility Guidance

In its Revised Patent Subject Matter Eligibility Guidance, the USPTO notes that, in the wake of Alice, courts have been comparing patent claims before them to those previously determined to be directed to abstract ideas. “While that approach was effective soon after Alice was decided, it has since become impractical,” the guidance states. “The Federal Circuit has now issued numerous decisions identifying subject matter as abstract or non-abstract in the context of specific cases, and that number is continuously growing. In addition, similar subject matter has been described both as abstract and not abstract in different cases. The growing body of precedent has become increasingly more difficult for examiners to apply in a predictable manner, and concerns have been raised that different examiners within and between technology centers may reach inconsistent results.”

To provide greater clarity, the guidance makes two significant changes to how patent examiners apply the first step of the U.S. Supreme Court’s Alice/Mayo test, which determines whether a claim is “directed to” a judicial exception. First, in accordance with judicial precedent and in an effort to improve certainty and reliability, the revised guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes certain groupings of subject matter: mathematical concepts, certain methods of organizing human activity, and mental processes.

As detailed by the USPTO, mathematical concepts include mathematical relationships, formulas, equations, or calculations. Methods of organizing human activity include fundamental economic principles or practices, commercial or legal interactions, or managing personal behavior or relationships or interactions between people. Mental processes include concepts performed in the human mind, including an observation, evaluation, judgment, or opinion. Claims that do not recite matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas, except in rare circumstances that require approval by the Technology Center Director.

The Revised Patent Subject Matter Eligibility Guidance goes on to establish a two-prong inquiry for whether a claim is “directed to” a judicial exception. In the first prong, examiners will evaluate whether the claim recites a judicial exception and if so, proceed to the second prong. In the second prong, examiners evaluate whether the claim recites additional elements that integrate the identified judicial exception into a practical application.

According to the guidance:

A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.

If a claim both recites a judicial exception and fails to integrate that exception into a practical application, then the claim is “directed to” a judicial exception. In such a case, further analysis pursuant to the second step of the Alice/Mayo test is required. To illustrate the analysis, the USPTO provides the following example:

For example, when evaluating a claim reciting an abstract idea such as a mathematical equation and a series of data gathering steps that collect a necessary input for the equation, an examiner might consider the data gathering steps to be insignificant extra-solution activity in revised Step 2A, and therefore find that the judicial exception is not integrated into a practical application. However, when the examiner reconsiders the data gathering steps in Step 2B, the examiner could determine that the combination of steps gather data in an unconventional way and therefore include an “inventive concept,” rendering the claim eligible at Step 2B.

What’s Next for Patent Subject Matter Eligibility?

The USPTO is seeking public comment on all the issues addressed by the guidance. Impacted entities are encouraged to submit written comments to Eligibility2019@uspto.gov(link sends e-mail) on or before March 8, 2019. 

If finalized in its current form, the Revised Patent Subject Matter Eligibility Guidance provides useful insight into how patent examiners will analyze claims under the Mayo/Alice test. The new framework also strongly favors eligibility, which is good news for entities that are seeking patent protection.

While the USPTO guidance is welcome news, this area of patent law is expected to continue to develop. We encourage our readers to stay tuned for updates and contact one of Scarinci Hollenbeck’s experienced technology law attorneys with any questions you may have.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.