US Patent and Trademark Office revises guidance for determining subject matter eligibility

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By Stephen B. Schott

To start the new year, Director Iancu and the US Patent and Trademark Office continue what most people see as an acceleration of the pendulum towards a broader, and hopefully clearer, definition of patentable subject matter eligibility. The new Section 101 guidelines “aim to improve the clarity, consistency, and predictability of actions across the USPTO,” according to Iancu who added that “The USPTO will provide training to examiners and administrative patent judges on both documents to ensure that guidance is being properly administered.”

The guidelines make two primary changes to how patent examiners apply the first step of the U.S. Supreme Court’s Alice/Mayo test, which determines whether a claim is “directed to” a judicial exception.

First, the revised guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes certain groupings of subject matter: mathematical concepts, certain methods of organizing human activity, and mental processes.

Responding to subject matter rejections in the future should cite these guidelines and argue that their inventions, especially if they are software, do not fall into these categories.

Second, the revised guidance includes a two-prong inquiry for whether a claim is “directed to” a judicial exception. In the first prong, examiners will evaluate whether the claim recites a judicial exception and if so, proceed to the second prong. In the second prong, examiners evaluate whether the claim recites additional elements that integrate the identified judicial exception into a practical application. If a claim both recites a judicial exception and fails to integrate that exception into a practical application, then the claim is “directed to” a judicial exception. In such a case, further analysis pursuant to the second step of the Alice/Mayo test is required.

The second step should be familiar to most practitioners at this point because it’s been the focus of articles in this blog, as well as many other commentator’s advice for responding to actions.

If you have questions, contact me.