USPTO Revised Guidance for Subject Matter Eligibility, Effective January 7, 2019
On January 4, 2019, the USPTO announced revised guidance taking effect on January 7, 2019, for determining subject matter eligibility under 35 U.S.C. § 101 (“2019 Revised Patent Subject Matter Eligibility Guidance”). The revised guidance supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
Under the revised guidance, the USPTO outlined a two-prong inquiry to Step 2A of the subject matter eligibility analysis. In the first prong, claims are evaluated as to whether they recite a judicial exception. Examiners are to refer to the following groupings of subject matter that have been identified by the courts as abstract ideas:
(a) Mathematical concepts, e.g., mathematical relationships, mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity, e.g., fundamental economic principles or practices; commercial or legal interactions; managing personal behavior or relationships or interactions between people; and
(c) Mental processes, e.g., concepts performed in the human mind. 1
Claims that do not recite matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas (with rare exceptions), i.e., the claim is eligible at Prong One of the revised Step 2A.2
In Prong Two of the revised Step 2A, claims are evaluated as to whether they recite additional elements that integrate the judicial exception into a practical application of that exception. Integration into a practical application can be evaluated by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations laid by the courts.3 The USPTO provided several examples of additional elements that may have integrated the judicial exception into a practical application, such as additional elements that:
- reflect an improvement in the functioning of a computer or to other technology or technical field;
- apply or use a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
- implement a judicial exception with, or use a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
- effect a transformation or reduction of a particular article to a different state or thing.4
The analysis under Prong Two is the same for all claims reciting a judicial exception, whether the exception is an abstract idea, a law of nature, or a natural phenomenon.
Notably, Prong Two does not consider whether the additional elements represent “well-understood, routine, conventional activity” as such analysis is performed in Step 2B of the subject matter eligibility analysis. The USPTO stated it is possible that a claim that does not integrate a recited judicial exception is nonetheless patent eligible under Step 2B, which evaluates whether additional claim elements individually and in combination provide an inventive concept (i.e., significantly more than the judicial exception itself).5
According to the revised guidance, if an examiner determines a claim limitation that does not fall into the enumerated groupings of abstract ideas to be ineligible, the rejection must be approved by the Technology Center Director and must provide a justification for treating the claim limitation as an abstract idea.6
See the Guidance here.
2 See id. at p. 12.
3 See id. at p. 19.
4 See id.
5 See id. at p. 21.
6 See id. at p. 25.