(Synopsis by Kurt T. Buechle)
On January 4, 2019, the U.S. Patent and Trademark Office announced new guidance for evaluating patent subject matter eligibility; this guidance published and became effective on January 7, 2019.
Presently, Examiners apply the “Alice/Mayo test,” named after two Supreme Court decisions addressing subject matter eligibility, when evaluating whether or not a claim contains patent-eligible subject matter under 35 U.S.C. § 101, the section of the patent statute defining subject matter eligible for patenting, which includes “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Assessing whether or not claimed subject matter falls into one of these enumerated categories constitutes “Step 1” of the Alice/Mayo test. The new guidance addresses “Step 2,” and, in particular, “Step 2A” of the Alice/Mayo test.
The new guidance divides Step 2A into two prongs. In the first prong, the Examiner determines whether or not a claim in a patent application recites a “judicial exception” to eligible subject matter that can be permissibly claimed. Judicial exceptions include abstract ideas, natural phenomena, and laws of nature. The new guidance seeks to help Examiners identify abstract ideas by grouping them into three broad categories—(a) mathematical concepts, (b) certain methods of organizing human activity, and (c) mental processes—with examples listed for each. If the claimed subject matter does not fall into any of these categories (and is also neither a law or nature or natural phenomena), it is generally considered to be eligible for patenting. If the claimed subject matter does fall into one of these categories, it is considered to contain a judicial exception and it is necessary to proceed to the second prong of Step 2A.
In the second prong, the Examiner determines whether or not the judicial exception is integrated into a practical application of that exception. The new guidance provides non-limiting examples of such integration. One or more additional claim elements can integrate a judicial exception into a practical application such as an improvement in how a computer or other technology functions, or to carry out a medical treatment. However, it remains to be seen how broadly “practical application” will be interpreted by Examiners.
If the Examiner determines that the judicial exception is integrated into a practical application, the judicial exception no longer applies and the claim is subject matter eligible. If not integrated, the Examiner must proceed to Step B of the Alice/Mayo test. Under Step B, a claim can still be judged to be subject matter eligible if it amounts to an inventive concept, which is possible if the claim recites additional elements that provide significantly more than the judicial exception.
It is hoped that the new guidance will bring greater clarity and certainty to an aspect of patent law that has caused considerable confusion and lack of predictability in patent prosecution in the wake of several Supreme Court decisions and many subsequent, often inconsistent, Federal Circuit decisions. However, the new guidance does not constitute substantive rulemaking and does not have the force and effect of law. The new guidance was published in the Federal Register on January 7, 2019. The Office’s announcement and the guidance document can be accessed by clicking here.
(The above memorandum is for informational purposes only and does not constitute legal advice in any way, and also does not serve as the basis for forming an attorney-client relationship.)