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IP Alert: USPTO Releases Latest Guidance for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101

January 11, 2019

Since the 2012 and 2014 landmark Supreme Court decisions Mayo Collaborative Servs. v. Prometheus Labs., Inc. and Alice Corp. Pty. Ltd. v. CLS Bank Int’l, inventors, business owners, patent practitioners, courts, and USPTO examiners alike have struggled with how to apply the Supreme Court’s framework in Alice/Mayo for evaluating whether an invention is eligible subject matter for patenting. On January 7, in an effort to address the need for accurate and consistent application of the Alice/Mayo test, the USPTO issued guidance to be used by examiners in evaluating subject matter eligibility for patent applications.

Patent-eligible subject matter is defined in 35 U.S.C. § 101 as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” However, the Supreme Court has identified laws of nature, natural phenomena, and abstract ideas as “judicial exceptions” to those statutory categories. In Alice, the Court announced a two-part test for determining patent-eligible subject matter: (1) whether a claim is directed to one of the judicial exceptions, and (2) whether the claim recites additional elements that amount to significantly more than the judicial exception.

The USPTO previously issued a series of guidelines intended to advise its Examining Corps in making accurate and consistent decisions regarding patent eligibility. Past efforts have not been wholly successful in either regard. Many of the previous guidelines relied upon an analysis approach that required patent examiners to apply litigation-based precedent on a case-by-case basis. As a general rule, however, the 8,000+ examiners at the USPTO are not lawyers, so are not deeply trained in reading, interpreting, and applying case law in such a manner.

This latest guidance, although heavily annotated to demonstrate a direct link between the dictates of guidance and the relevant case law, includes clear statements and examples so that examiners need not individually (and possibly inconsistently) interpret legal decisions. While patent-eligibility analysis may never submit to a simple bright-line test, this new guidance may prove very helpful to both examiners and those seeking patents by at least clarifying the basic rules of the road.

The guidance largely addresses only the first step of the Alice/Mayo test—whether a claim is directed to one of the judicial exceptions. It does this by breaking down this first step into two sequential inquiries.

Under the first prong, if the examiner believes that a claim presents abstract subject matter, the examiner must confirm that the identified abstract claim features fall within one of a number of specific subject matter groupings. Those specific groupings are

(a) Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations;

(b) Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and

(c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).

The guidance specifies that, except in rare circumstances, claims should not be treated as abstract ideas if they do not fall into one of the above groupings. If a claim does pass the first prong, the examiner then proceeds to a new second prong.

Under the second prong of the guidance, examiners must evaluate whether the abstract content is integrated into a practical application. If true, the claim is not directed to an abstract concept, notwithstanding the presence of that abstract concept.

The guidance provides several examples of when a judicial exception is integrated into a practical application, such as when the claim

  • reflects an improvement in the functioning of a computer,
  • effects a particular treatment for a disease or medical condition,
  • is applied with or used by a particular machine,
  • transforms or reduces a particular article to a different state or thing, or
  • is applied or used in some other meaningful way beyond generally linking the use to a particular technological environment.

Under the Alice/Mayo two-part test, if a claim is directed to abstract content, the second part of the test then assesses whether there is nevertheless something “significantly more” in the claim that preserves the patent eligibility of that claim. When assessing that “significantly more” aspect, examiners often assess whether the additional element or elements at issue represent “well-understood, routine, conventional activity.” When true, such an element may fail to constitute something that is “significantly more.”

The new guidance clarifies that the inquiry into whether an element is well-understood, routine, and conventional has no part to play when initially deciding whether a claim is directed to abstract subject matter. In particular, when deciding whether the abstract content is integrated into a practical application, the guidance instructs that it is irrelevant whether the details of that practical application are otherwise well-understood, routine, and conventional.

In addition to offering clarity, the guidance ideally will mitigate inconsistent examination as well as unduly harsh denials of patent eligibility during patent examination.

The 2019 Revised Patent Subject Matter Eligibility Guidance is effective immediately and applies to all pending and newly filed applications as well as to all patents resulting from applications filed before, on, or after January 7, 2019. It also applies to proceedings before the Patent Trial and Appeal Board.

Guidance on Computer-Implemented Functional Claim Limitations for Compliance With 35 U.S.C. 112 was also released on January 7 and is discussed in our IP alert here.

For more information, please contact Fitch Even partners Joseph F. Marinelli and Steven G. Parmelee, authors of this alert.

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