2019 USPTO Revised Patent Subject Matter Eligibility Guidance

In Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (“Alice Corp.”), the Supreme Court made clear that it applies the framework set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) (“Mayo”) to analyze claims directed to laws of nature and abstract ideas. Alice Corp. Also establishes that the same analysis applies for all categories of claims. The basic inquiries to determine subject matter eligibility as explained in MPEP 2106(I) are:

Step 1: determine whether the claim is directed to one of the four statutory categories of invention, namely, process, machine, manufacture, or composition of matter.

Steps 2A and 2B: the two-part test provided in Alice Corp. to determine whether a claim is directed towards an abstract idea is statutory under 35 U.S.C. § 101 requires an evaluation to determine:

2A: whether the claim(s) is/are directed to an abstract idea; and

2B: if an abstract idea is present in the claim, whether the claim amounts to significantly more than the abstract idea itself.

Properly applying the Alice/Mayo test has proven difficult, has caused uncertainty, and has produced inconsistent examination results amongst patent examiners. To solve this, the USPTO has issued a 2019 Revised Patent Subject Matter Eligibility Guidance (“the 2019 Guidance”) USPTO personnel in evaluating subject matter eligibility under Step 2A.

Pursuant to the 2019 Guidance, the revised Step 2A inquiry includes (1) whether the claim recites a judicial exception; and (2) whether a recited judicial exception is integrated into a practical application of the recited judicial exception. When a claim recites a judicial exception and integrates the exception into a practical application, the claim is not “directed” to a judicial exception and is patent eligible. When a claim recites a judicial exception and does not integrate the exception into a practical application, the claim is “directed” to a judicial exception, thereby triggering the need for further analysis under Step 2B of the Alice/Mayo test.

Under revised Step 2A, a judicial exception is a law of nature, a natural phenomena, or an abstract idea. When recited as a claim limitation, the following groupings of subject matter constitute abstract ideas:

-mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations),

-methods of organizing human activity (fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions), and

-mental processes (concepts performed in the human mind (including an observation, evaluation, judgment, opinion).

Revised Step 2A specifically excludes consideration of whether recited claim elements represent well-understood, routine, or conventional activity, which is a significant change in the patent eligibility analysis. Instead, analysis of well-understood, routine, or conventional activity is evaluated in Step 2B. Therefore, the revised Step 2A analysis requires examiners to consider all recited elements, whether they are conventional, when evaluating whether a judicial exception has been integrated into a practical application.

In the context of revised Step 2A, the following considerations may be indicative that a recited element or a combination of recited elements may integrate an exception into a practical application:

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

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

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

– an additional 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.

Although the new framework of revised Step 2A does not have the force and effect of law, the USPTO developed revised Step 2A to enable USPTO personnel to apply the patent eligibility analysis in a more predictable way, to prevent examiners within and between technology centers from reaching inconsistent results, and to promote a more efficient resolution of patentability.

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