On January 7, 2019, the USPTO released revised Subject Matter Eligibility Guidance (the “Revised Guidance”) which provides revised guidelines for examiners to apply while evaluating patent subject matter eligibility.
The Revised Guidance acknowledges that properly applying the Supreme Court’s frame work for evaluating patent eligibility (the “Alice/Mayo test”) has proven to be difficult and has caused uncertainty. In particular, the proper scope and application of the abstract idea exception under Step 2A of the Alice/Mayo test has been unclear and difficult to determine.
To address these concerns, the Revised Guidance revises the examination procedures for determining whether a patent claim or patent application claim is directed to a judicial exception under Step 2A of the Alice/Mayo test by: (1) providing groupings of subject matter that is considered an abstract idea; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception.
Following the Alice decision, the Office and the courts adopted an approach of comparing the claims at issue to those previously found to be directed to an abstract idea when considering subject matter eligibility. The Revised Guidance acknowledges that the foregoing approach was effective soon after Alice was decided but has since become impractical. For instance, the Revised Guidance acknowledges that similar subject matter has been described both as abstract and non-abstract in different cases. The growing body of precedent has become more difficult for examiners to apply in a predictable and consistent manner.
First, the Revised Guidance clarifies that only the following groupings of subject matter will be considered as abstract ideas:
- Mathematical concepts;
- Certain methods of organizing human activity; and
- Mental processes.
The Revised Guidance explains that claims that do not recite subject matter that falls within one of the above three groupings should not be treated as reciting an abstract idea, unless exceptionally approved by the Technology Center Director.
Second, the Revised Guidance sets forth a two-prong procedure to determine whether a claim is “directed to” a judicial exception under Step 2A of the Alice/Mayo test.
Under Prong One, examiners should evaluate whether a claim recites a judicial exception, i.e., a law of nature, a natural phenomenon, or an abstract idea as enumerated in one of the three groupings shown above. If a claim does not recite a judicial exception, the claim is patent eligible and the analysis is concluded. If the claim recites a judicial exception, then the analysis proceeds to Prong Two where examiners should evaluate whether the recited judicial exception is integrated into a practical application of the identified judicial exception. If the claim as a whole integrates the identified judicial exception into a practical application, then the claim is not “directed to” a judicial exception, and thus is patent eligible. If, however, the identified judicial exception is not integrated into a practical application, then the claim is determined to be directed to the identified judicial exception, and requires further analysis under Step 2B of the Alice/Mayo test.
Accordingly, Prong One provides a change in determining whether a claim recites an abstract idea by limiting the possible categories of abstract ideas to the above listed three groupings of subject matter. Further, examiners will no longer use the USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas” (first issued in July 2015 and updated most recently in July 2018). Under Prong Two, the Revised Guidance provides that in determining whether a judicial exception recited in a claim is integrated into a practical application, examiners should give weight to all additional elements, whether or not they are conventional, and states that the analysis of well-understood, routine, conventional activity should be performed in Step 2B.
If it is determined that a judicial exception recited in a claim is not integrated into a practical application under Prong Two, then examiners should proceed to apply Step 2B of the Alice/Mayo test to evaluate whether the claim recites additional elements, specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which provide an inventive concept and amounts to significantly more than the judicial exception itself.
The Revised Guidance provides clearer delineations of what constitutes an abstract idea and steps in identifying whether a claim is directed to an abstract idea, nonetheless, it remains unclear as to what extent a judicial exception needs to be integrated into a practical application to be patent eligible. Further, whether the Federal Circuit will agree with the Revised Guidance, and/or to what extent the Federal Circuit will apply the Revised Guidance remains to be seen.
As the USPTO examiners will start examining patent application based on the Revised Guidance, patent eligibility examination of software-based claims may see a favorable shift toward patent applicants and the Revised Guidance may reduce the overall number of claim rejections under 35 U.S.C. § 101.
 Alice Corp. v. CLS Bank International (2014).
On December 5, 2013, the Supreme Court granted certiorari in Alice Corporation v. CLS Bank, in response to a petition filed on September 4, 2013 in the wake of the en banc CLS Bank decision by the Federal Circuit in May 2013.