The US Patent & Trademark Office (USPTO) recently announced revised guidance on how it will review patents and applications for subject-matter eligibility.1 The revised guidance went into effect on 7 January 2019, and applies to all patents and patent applications. In setting the revised guidance, the USPTO noted the attention (and continued uncertainty) that subject-matter eligibility has experienced over the last decade and the "unique challenges" the USPTO faces ensuring examiners and administrative patent judges "apply the Alice/Mayo test in a manner that produces reasonably consistent and predictable results." The revised guidance outlines an updated analysis that the USPTO will follow when evaluating claims under Step 2A of the Alice/Mayo test – whether the claim is directed to one of the judicial exceptions to patent eligibility. It includes three sections and, in effect, separates the analysis required under Alice Step 2A into two inquiries (Prong One and Prong Two). Sections I and III introduce new Prongs One and Two, respectively. Section II explains that the new procedure is "rooted in" the continuing case law from the Supreme Court and Federal Circuit.
Under new Prong One, a claim is evaluated to determine if it recites a judicial exception to patent eligibility. Prong One is similar to the USPTO's prior guidance but with some changes explained below. In particular, the claim under review will no longer be compared to claims already determined (by a court) to be directed to an abstract idea as the USPTO previously did. If the claim is found to not recite a judicial exception under Prong One, the claim is determined to be patent eligible. If it is found to recite a judicial exception, the claim is further evaluated under new Prong Two to determine if it recites additional elements that integrate the exception into a practical application. If so, the claim is determined to be patent eligible. If not, the claim is further evaluated to determine if it meets the requirements of Alice Step 2.
On a practical note, the revised guidance supersedes the Manual of Patent Examining Procedure ("MPEP") §2106.04(II) (discussing patent eligibility under Alice Step 2A) and supersedes all versions of the USPTO's "Eligibility Quick Reference Sheet Identifying Abstract Ideas" (first published in July 2015 and most recently updated in July 2018). While the revised guidance does not itself constitute substantive rule making or have the force of law, it provides guidance on the USPTO's interpretation and application of patent eligibility law in view of the (continuing) decisions from the Federal Circuit and the Supreme Court.
Download >> US Update: New 101 Guidance
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
