June 4, 2015
As we discussed in an earlier alert in December of last year, the U.S. Patent and Trademark Office (USPTO) issued the 2014 Interim Guidance on Patent Subject Matter Eligibility (“the Guidance”). The Guidance details procedures to be used by patent examiners when judging patent eligibility under 35 U.S.C. § 101 in view of decisions by the U.S. Supreme Court. On June 2, 2015, the USPTO hosted a Medical Device Technology Partnership Meeting at which representatives from the USPTO discussed and attempted to clarify the procedures set forth in the Guidance.
A primary concern in determining eligibility under section 101 is guarding against attempts to monopolize laws of nature, natural phenomena, and abstract ideas. As noted by the U.S. Supreme Court in Diamond v. Chakrabarty, these are to be “free to all men and reserved exclusively to none.” Yet, the Supreme Court also stated in Mayo Collaborative Services v. Prometheus Labs, Inc. that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Consequently, by its very nature, a patent claim will monopolize a certain application of an abstract idea, law of nature, or natural phenomena. This makes all patent claims susceptible, at some level, to rejections under section 101. Accordingly, it is important to understand the Guidance and how the USPTO expects it to be implemented. Such insight was provided during the June 2nd meeting.
As set forth in the Guidance, and reiterated during the discussion, when determining if a claim presents a patent-eligible invention under section 101, USPTO examiners are to use the flowchart below, which the USPTO believes to be consistent with the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Intern.
As the chart indicates, the examiners are first to determine if the claim is directed to one of the four permitted statutory classes (process, machine, manufacture, or composition of matter). If so, the examiner is then to determine if the claim is directed to an abstract idea or other judicially recognized exception.
The USPTO stated during the discussion that a claim should be considered directed to an abstract idea only if an abstract idea is recited in at least one of the claim’s limitations. In making this determination, examiners are to look to the court cases provided in the Guidance and determine if the suspected abstract idea is similar to what has been previously found by the courts to be an abstract idea. If, however, the courts have not identified something similar as an abstract idea, then the examiner must present an explanation as to why the identified limitation is an abstract idea. Accordingly, when rejecting a claim under section 101 the examiner must (1) identify the limitation of the rejected claim directed to the abstract idea, and (2) support the determination by either (a) citing a decision by the courts, or (b) providing a detailed explanation of why the limitation is an abstract idea.
If the examiner determines that the claim in question does contain a properly identified abstract idea, then the examiner is to determine if the claim contains “significantly more” than the abstract idea. The USPTO explained that in making this determination, the examiner is to ascertain whether the claim recites anything more than what is routine and conventional. If something more than routine and conventional processes or components are recited in the claim, then the claim should not be rejected under section 101. If, on the other hand, nothing more than what is routine and conventional is recited in the claim, then the examiner must determine if the claimed invention improves a technology or field of technology, as discussed in DDR Holdings, LLC v. Hotels.com, L.P. If so, then the claim should not be rejected under section 101.
The USPTO further explained that preemption is not to be confused with the failure of a claim to recite significantly more than an abstract idea. While acknowledging that preemption of abstract ideas and general concepts is a concern mentioned on several instances by the courts, the USPTO noted that preemption is not part of the above two-part test required under Alice.
The USPTO then offered some advice on overcoming rejections under section 101. In particular, the USPTO recommended explaining in the specification of the application why and how the invention is a technological improvement and focusing the claims on the features and processes of the inventions that enable the technological improvement. Also, the USPTO suggested that examiner interviews are often helpful in explaining these matters to the examiner.
During the discussion, the presenters were asked what evidence examiners must present to demonstrate that elements of claims are routine and conventional. The USPTO responded that an examiner is to rely on his or her experience. The USPTO then suggested that one way to overcome such a showing was to present a declaration from a disinterested expert.
Given that by their very nature all claims will monopolize a certain application of an abstract idea, law of nature, or natural phenomena, all patent claims are susceptible, at some level, to rejections under section 101. The insights provided by the USPTO give a better understanding of where that office would like examiners to draw the line.
--Written by Fitch Even attorney James A. Zak
Fitch Even IP Alert®