USPTO Revises Patent Subject Matter Eligibility Guidance

March 7, 2019 | Intellectual Property News, Legal News

On January 7, 2019, the U.S. Patent and Trademark Office released the “2019 Revised Patent Subject Matter Eligibility Guidance” to assist USPTO personnel in evaluating subject matter eligibility. (84 FR 50, Jan. 7, 2019, “Guidance.”) The Guidance revises the procedures for determining whether or not a patent claim or patent application claim is directed to one of the judicially created exceptions to 35 U.S.C. § 101: laws of nature, natural phenomena, and abstract ideas.

The new guidelines revise the procedures under what is known as the Alice/Mayo test for determining patent subject matter eligibility. Under prior examination procedure Step 2A, the examiner first determines whether a claim is “directed to” a patent-ineligible concept (laws of nature, natural phenomena, abstract idea) and if not, the inquiry ends there, as the claim is patent eligible. Otherwise, the examiner determines under Step 2B whether the balance of the claim adds “significantly more” to the judicial exception. This analysis is performed by considering the elements of the claim both individually and as an ordered combination. A portion of this analysis involves determining whether the additional elements transform the nature of the claim into a patent-eligible application, such as by reciting aspects that are not “well-understood, routine, conventional activity.”

Under the revised procedure, Step 2A is divided into two separate prongs to elucidate the “directed to” inquiry. Under Prong 1, the examiner first evaluates whether the claim recites a judicial exception. For an “abstract idea,” the examiner performs this evaluation by a) identifying the specific limitation(s) in the claim that individually or in combination recites the judicial exception and b) determining whether the identified limitation(s) fall within one of the subject matter groups enumerated in the Guidance, namely mathematical concepts, certain methods of organizing human activity, and mental processes. Examples from the caselaw are cited in support of each of these groups. If the examiner concludes that the identified limitations do fall within one or these groups, then the analysis proceeds to Prong 2. If not, the claim is subject matter eligible. Under Prong 2, which applies to all three types of judicial exceptions, the examiner evaluates whether the identified judicial exception is integrated into a practical application. For example, if the claim applies, relies on, or uses the identified 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,” then the claim is patent subject matter eligible. Otherwise, analysis proceeds to Step 2B, which remains unchanged.

With these revised guidelines, the USPTO appears to be attempting to increase the predictability and consistency of the examination process. Of particular note, USPTO personnel is no longer permitted to use the USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.” Also, the revised guidelines insist that the examiner must consider the claim as a whole when evaluating whether the judicial exception is “integrated into a practical application.” The guidelines further note that a claim that includes conventional elements may still be patent subject matter eligible by integrating a judicial exception into a practical application.