USPTO Responds to Public in a Subject Matter Eligibility Update

October 28, 2019 | Intellectual Property News, Legal News

On October 18, 2019, the U.S. Patent and Trademark Office provided an update to their prior guidelines released on January 7, 2019 in response to public comments. (84 FR 50, Jan. 7, 2019, “Guidance.”) The Guidance revises USPTO 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.

In the October update (“Update”), the USPTO clarifies how an examiner should determine whether a claim “recites” a judicial exception in Step 2A (Prong One). Claims that either state (set forth) a judicial exception or describe a concept that falls under a judicial exception without necessarily explicitly naming it are determined to “recite” a judicial exception. Prong Two of Step 2A analyzes whether the recited judicial exception has been integrated into a practical application. A claim is “directed to” a judicial exception when it satisfies both Prong One and Prong Two of Step 2A of a patent subject matter eligibility assessment. Thus, if a claim is determined to integrate the judicial exception into a practical application, the claim is not directed to the judicial exception.

The October Update explains that, in performing Prong Two of Step 2A to determine whether the recited judicial exception has been integrated into a practical application, the Examiner should take into consideration all of the claim limitations as a whole and how those limitations interact and impact each other. For example, the Manual of Patent Examination Procedure (“MPEP”) explains that examiners should evaluate any improvement in the functioning of a computer/other technology/technical field by determining whether the specification provides sufficient details regarding such improvement and, if so, whether the claim reflects the disclosed improvement. The Update notes that this determination, as described by the MPEP and the Guidance, is not an explicit test sanctioned by the courts for performing a Prong Two analysis. Also, as part of this analysis, the examiner should consider other factors that may indicate integration into a practical application such as implementing the judicial exception with a particular machine or manufacture, effecting a transformation or reduction of an article, and applying the judicial exception in some other meaningful way. Whether a claim limitation is, for example, an extra-solution activity is considered without reference to whether such extra-solution activity is well-known, conventional, or routine.

The Update also includes a set of further examples and characterizations of court decisions to aid in examiner training.