Last week the United States Patent and Trademark Office (USPTO) released revised guidance on patent subject matter eligibility (35 U.S.C. § 101).

“The 2019 Revised Patent Subject Matter Eligibility Guidance revises the procedures for determining whether a patent claim or patent application claim is directed to a judicial exception (laws of nature, natural phenomena, and abstract ideas) under Step 2A of the USPTO’s Subject Matter Eligibility Guidance in two ways.”


Reciting an abstract idea

The revised guidance first states that if claims do not fall within the categories of mathematical concepts, certain methods of organizing human activity, and mental processes they cannot be characterized as reciting an abstract idea unless otherwise “approved by the USPTO Technology Center Director (which approval will be indicated in the file record of the application), and must provide a justification for why such claim limitation is being treated as reciting an abstract idea.”

More importantly, the revised guidance provides some clarity on how examiners should treat claims after an abstract idea has been identified.  Under the revised guidance, examiners will have the burden of showing that claims are directed to an abstract idea and are not directed to a practical application of the abstract idea.


Revised Step 2A Procedure

The updated guidelines include a revised procedure for examiners to determine if a claim is “directed to” a judicial exception under Step 2A of the Alice/Mayo test.

Under the revised procedure, an examiner will first establish whether or not the claim recites a judicial exception, and if it does, the examiner will evaluate whether the claim integrates the judicial exception into a practical application.

“Only when a claim recites a judicial exception and fails to integrate the exception into a practical application, is the claim ‘directed to’ a judicial exception, thereby triggering the need for further analysis pursuant to the second step of the Alice/Mayo test.” The guidance lists several examples of claim elements or combinations of claim elements that may integrate a judicial exception into a practical application, including:

-an additional claim element reflects an improvement in the functioning of a computer or an improvement to other technology or technical field;

-an additional claim element applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;

-an additional claim element 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 additional claim element effects a transformation or reduction of a particular article to a different state or thing; and

-an additional claim element 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.

The revised guidelines end stating that if further analysis is needed, the examiner or administrative patent judge will proceed in accordance with existing USPTO guidance as modified in April 2018.”

The 2019 Revised Patent Subject Matter Eligibility Guidance was published in the Federal Register January 7, 2019. It applies to all applications, and to all patents resulting from applications, filed before, on, or after January 7, 2019.

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