Update: From USPTO Patent Eligibility Guidelines

This is an update from our newsletter of January 2015. On July 30, 2015, the USPTO issued an update regarding the 2014 Interim Guidance on Subject Matter Eligibility (2014 IEG) published on December 16, 2014, in response to comments from the public on the IEG. The topics covered in the July 2015 Update include:

(1) Requests for additional examples, particularly for claims directed to abstract ideas and laws of nature
(2) Further explanation of the markedly different characteristics (MDC) analysis
(3) Further information regarding how examiners identify abstract ideas
(4) Discussion of the prima facie case and the role of evidence with respect to eligibility rejections
(5) Information regarding application of the 2014 IEG in the corps
(6) Explanation of the role of preemption in the eligibility analysis, including a discussion of the streamlined analysis

The Update includes Appendices including the new Examples, a comprehensive list of Examples including those previously provided, and a listing and very brief summaries of Supreme Court and Federal Circuit patent eligibility cases. The new Examples are focused on abstract ideas, in particular for business method, graphical user interface and software claims. The USPTO indicated that a further update with respect to biotechnology claims (diagnostic and other method claims directed to laws of nature and natural phenomena) is in process, in view of recent case law developments.

Among the numerous topics discussed, the Update addresses the public comments requesting that the examiners be given further guidance on examining all additional elements in the claims beyond the judicial exception both individually and in combination to determine whether the claim as a whole amounts to significantly more than the exception (see section I. Additional Examples). However, this promising guidance appears to be somewhat undermined in how its application in the comments in section VI (The Role of Preemption, and the Streamlined Analysis), where the Update states:

The 2014 IEG Already Incorporates Preemption Where Appropriate. The Supreme Court has described the concern driving the judicial exceptions as preemption, however, the courts do not use preemption as a stand‐alone test for eligibility.“

Moreover, the Update asserts

Streamlined Analysis. For the convenience of examiners, the 2014 IEG presented a streamlined analysis that is available for claims that “clearly do not seek to tie up any judicial exception such that others cannot practice it.” The use of “tie up” refers to the results of Steps 2A and 2B, and is not meant to imply that the streamlined analysis is either a preemption test or a means of avoiding the results that would occur if a claim were to undergo the full eligibility analysis.

It remains to be seen how these potentially inconsistent positions are addressed in the forthcoming biotechnology examples, e.g., when there is clearly no preemption in a diagnostic method claim, based on limitations to a specific assay modality, and the claims therefore include “significantly more” than the law of nature. Particularly this will be of interest in view of very recent cases such as Sequenom v.Ariosa, (Fed. Cir. 2015), decided June 12, 2015, and in view of how examiners have been treating such claims in prosecution. Clearly, as the case law continues to evolve, it is evident that the standard for subject matter eligibility remains unsettled.


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