New Guidance from the USPTO Aims to Clarify Patent-Eligible Subject Matter Determination
Stites & Harbison Client Alert, January 15, 2019
On January 7, 2019, the USPTO released updated guidance on how Patent Examiners should determine whether an invention is directed to subject matter that is eligible for patent protection under 35 U.S.C. § 101. The 2019 Revised Patent Subject Matter Eligibility Guidance (the “2019 Guidance”) represents the USPTO’s most recent effort to provide a more consistent application of the test used by examiners to evaluate patent claims for subject-matter eligibility. Notably, in the 2019 Guidance and in addition to providing a detailed explanation of how the revised guidelines should be applied, the USPTO has now made two major changes to the subject matter eligibility evaluation.
The first major change includes a clarification as to what should be considered an abstract idea. Under the previous guidance, and despite consistently affirming that abstract ideas should not be eligible for patent protection, the courts and the USPTO alike declined to define the concept of an abstract idea. Abstract ideas were typically just identified by comparing the claimed concept to previously identified abstract ideas, even though newly claimed concepts were rarely identical to the specific concepts that had already been reviewed by the courts. As a result, anyone who previously encountered a subject matter eligibility rejection involving an abstract idea most likely found themselves, at one point or another, feeling like they were trying to mash a misshapen puzzle piece into one of a few openings in a board.
Fortunately, the 2019 Guidance has attempted to address this issue by defining three groupings of subject matter that, when recited in a claim, constitute an abstract idea. Those three groupings include:
(a) Mathematical concepts – mathematical relationships, mathematical formulas or equations, [or] mathematical calculations;
(b) Certain 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
(c) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, [or] opinion).
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019).
Perhaps more interestingly, however, the 2019 Guidance then went on to state:
Claims that do not recite matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas, except as follows: In the rare circumstance in which a USPTO employee believes a claim limitation that does not fall within the enumerated groupings of abstract ideas should nonetheless be treated as reciting an abstract idea, the procedure described in Section III.C for analyzing the claim should be followed.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 53.
In this regard, not only do the revised guidelines appear to go a long way in clarifying what is, and is not, considered an abstract idea, but the revised guidelines make clear that in the event a claim does not fall within one of the enumerated groups, the Examiner must follow the procedure in Section III.C of the Guidance, which expressly requires the approval by a Technology Center Director before any such rejection is made. Accordingly, while the determination as to whether a specific examiner “believes” a claim limitation should be treated as an abstract idea (even though it does not fall within one of the enumerated groups) remains somewhat subjective, the revised guidelines appear to temper that subjectivity to some extent by requiring a Director’s approval in certain instances.
The other major change made by the 2019 Guidance is a new two-prong analysis for determining if a claim is “directed to” a judicial exception such as an abstract idea or other subject matter that does not fall within an allowed category of inventions. Under the second part of the existing subject matter eligibility guidelines, a claim was directed to a judicial exception when the exception was recited in the claim. With the new two prong analysis of the 2019 Guidance, however, determining whether a claim recites a judicial exception is only done under the first prong of the analysis (i.e., Prong One). The second prong (i.e., Prong Two) then further requires the examiner to evaluate whether the judicial exception is integrated into a practical application. This evaluation is based upon one or more of the considerations laid out by the courts, which are included in a non-exclusive list of examples in the 2019 Guidance.
One of the most important aspects of this new two prong analysis is that the revised second prong initially and explicitly “excludes consideration of whether the additional elements represent well-understood, routine, conventional activity.” 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 55. Those considerations are still accounted for in further analysis under the second prong of the 2019 Guidance. However, by excluding them from the initial analysis under the second prong, the 2019 Guidance disentangles a significant portion of the subject matter eligibility analysis from anticipation/obviousness issues that previously found their way into Examiner’s 35 U.S.C. §101, but were more properly addressed under 35 U.S.C. §§ 102 and 103.