USPTO Issues New Guidance on Subject Matter Eligibility

Previously featured on Michael Best’s Software and Section 101 blog on January 29, 2019, Michael Best IP attorney Greg Helding wrote:

In 2014, the Supreme Court’s Alice took computer-implemented inventions down the rabbit hole. Since then, lower courts, the USPTO, practitioners, and applicants all have struggled to come to consensus on what constitutes an abstract idea, and what it means for claims to be “directed to” an abstract idea. This has resulted in the Alice/Mayo test having been applied inconsistently by courts and USPTO personnel. Consequently, in this Alice’s wonderland, uncertainty prevails and abstract idea jurisprudence reigns like the Queen of Hearts. Addressing this uncertainty, the USPTO released the 2019 Revised Patent Subject Matter Eligibility Guidance on January 7, 2019. In the Guidance, the USPTO acknowledges the current state of affairs, noting that “something needs to be done to increase clarity and consistency” in the application of Section 101. The Guidance is that something.

The Guidance includes two major changes from prior procedures for determining subject matter eligibility. The first change is a new way to identify abstract ideas, which supersedes the previous “Eligibility Quick Reference Sheet Identifying Abstract Ideas.” Responding to the increasing difficulty for Examiners to apply the “growing body of precedent” regarding what constitutes abstract ideas in “a predictable manner,” the Guidance “extracts and synthesizes key concepts identified by the courts” into three subject matter groupings: 1) mathematical concepts, 2) certain methods of organizing human activity, and 3) mental processes. The Guidance includes the possibility of other abstract ideas that do not fall into these three categories, but notes that this is a “rare circumstance.” The second change clarifies what it means for a claim to be “directed to” a judicial exception (e.g., an abstract idea). Under the Guidance, a claim is not “directed to” a judicial exception if the claim as a whole integrates the recited judicial exception into a “practical application” of the judicial exception.

The Guidance incorporates these changes into a Revised Step 2A of the Alice/Mayo test (replacing the current Step 2A). Revised Step 2A is a two-pronged inquiry, which Examiners are to follow when determining whether a claim is directed to a judicial exception.

Prong One:  In Prong One, the Examiner evaluates whether the claim recites a judicial exception. The Examiner must identify specific claim limitations that the Examiner believes recite judicial exception. When the judicial exception is an abstract idea, the Examiner must now determine whether the identified limitations fall within the subject matter groupings for abstract ideas. If the claim does not recite a judicial exception (i.e., a law of nature, natural phenomenon, or subject matter within the groupings), then the claim is eligible at Prong One. If the claim recites a judicial exception, the Examiner performs further analysis under Prong Two.

Prong Two:  In Prong Two, the Examiner evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. In making this determination, Examiners are to evaluate additional claim elements. The following considerations are indicative of additional claim elements that integrate the exception into a practical application:

  • an element that reflects an improvement in the functioning of a computer, or an improvement to another technology or technical field;
  • an element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
  • an element that implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
  • an element that effects a transformation or reduction of a particular article to a different state or thing; and
  • an element that applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.

Claims that integrate the exception into a practical application are not “directed to” the exception, and are therefore patent-eligible.

Although not a change in procedure per se, it is important to note that, under the Guidance, Revised Step 2A does not evaluate whether the additional elements are well-understood, routine, or conventional activity. The Guidance reminds Examiners that “a claim that includes conventional elements may still integrate an exception into a practical application.” As noted in the Guidance itself, it does not have the force and effect of law. However, it is nevertheless a significant development because it directs the operations of the USPTO and its personnel. As noted in the Guidance, “[a]ll USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” While its effects remain to be seen, the initial indications are that the new Guidance may lead to a reduction in “abstract idea” rejections in applications covering software and computer-related inventions.

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