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The New USPTO Guidelines on Subject Matter Eligibility, Hoped to be a Step Forward

February 4, 2019 — The New USPTO Guidelines on Subject Matter Eligibility, Hoped to be a Step Forward The U.S. Patent and Trademark Office published new subject matter eligibility guidelines in the Federal Register on January 7, 2019. These new guidelines provide more details on how to apply the test set forth in Mayo/Alice, which are particularly useful for software inventions. While on their face these additional details are helpful in developing a claim strategy, the guidelines caution they do not have the force and effect of law and failure of USPTO personnel to follow these guidelines is not, in itself, a proper basis for either an appeal or a petition.

The Mayo/Alice test set forth by the Supreme Court comprises the general steps of first determining whether the claim at issue is directed to a patent-ineligible concept and if so whether the additional elements of a claim, alone or in combination, transform the nature of the claim into significantly more than a patent-ineligible concept. "The Alice/Mayo two-part test is the only test that should be used to evaluate the eligibility of claims under examination." MPEP 2106.

To help apply this test, the USPTO has issued a series of guidelines and examples on what is ineligible subject matter and what elements transform ineligible subject matter into something more. Prior to the latest revision, the recommended procedure was as follows:

Step 1: determine if the claim is directed to a process, machine, manufacture, or composition of matter, if "no" the claim is ineligible, if "yes" proceed to step 2A.

Step 2A: determine whether the claim is directed to a law of nature, a natural phenomenon, or an abstract idea, if "no" the claim is eligible, if "yes" proceed to step 2B.

Step 2B: determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exception, if "no" the claim is ineligible, if "yes" " the claim is ineligible.

The new guidelines provide further clarification as to how to perform step 2A by defining "abstract ideas" and by further defining when a claim is "directed to" a judicial exception.

With regard to defining "abstract ideas," the guidelines indicate that unless the claim recites a mathematical concept, a method of organizing human activity or a mental process, the claim should not be treated as reciting an abstract idea. To do otherwise, the examiner must get approval from the Group Director.

As to the concept of "directed to," the guidelines indicate if the judicial exception recited in a claim is integrated into a practical application, the claim is not "directed to" the judicial exception. This concept is based on the presumption that the practical application will impose a meaningful limit on the judicial exception and such a claim is not designed to monopolize the judicial exception.

With this new definition of "directed to," all elements of a claim are to be considered in determining if a claim is patent eligible. A limitation cannot be dismissed as conventional, well-understood or routine. The new analysis under Step 2A may provide applicants with more options to avoid and address claim rejections under 35 USC §101, particularly in the software industry. However, as indicated above, these guidelines do not have the force and effect of law.

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