U.S. Patent & Trademark Office, October 2019 Update: Subject Matter Eligibility (2019)
On October 17, 2019, the U.S. Patent and Trademark Office (“USPTO”) released new guidance on the criteria for determining whether a particular subject matter is patent eligible.
Only certain types of subject matter are patentable under United States law. Specifically, 35 U.S.C. §101 provides that one may patent the invention or discovery of “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof… subject to the conditions and requirements of this title.” In 2014, the Supreme Court in Alice Corp. vs. CLS Bank Int'l set forth a two-part test for determining whether claims are directed to patent-eligible subject matter under § 101. The first of these steps—referred to by the USPTO as “Step 2A”—examines whether the claim at hand involves a law of nature, a natural phenomenon, or an abstract idea. Each of these subject matter areas is judicially excluded from patent protection, unless deemed sufficiently significant to overcome this exclusion, under “Step 2B.”
In January 2019, the USPTO issued Revised Patent Subject Matter Eligibility Guidance (“PEG”), clarifying various details pertaining to the Alice Corp. test. In response to public comments concerning this PEG, the USPTO’s October 17 update offers further clarification on the following five specific issues pertaining to said test.
I. Evaluating Whether a Claim Recites a Judicial Exception
Per the update, a claim is deemed to “recite” judicially exempted subject matter (i.e., a law of nature, natural phenomenon, or abstract idea) in one of two ways: if it explicitly “sets forth” that subject matter, or even if it merely “describes” it. A claim can also recite more than one judicial exception. If these exceptions are of different types (e.g. a law of nature and an abstract idea), then examiners should select one of the exceptions for which to conduct the eligibility analysis. By contrast, where multiple abstract ideas are recited by the same claim, the examiner should consider the limitations together.
II. Categorizing Abstract Ideas
The USPTO no longer uses a case-comparison approach to determine if a claim recites an abstract idea. Instead, it categorizes such ideas into “enumerated groupings”:
Regarding “mathematical concepts” (mathematical relationships, mathematical formulas or equations, and mathematical calculations), the “examiner should consider whether the claim recites a mathematical concept or merely includes limitations that are based on or involve a mathematical concept.” Claims that are merely based on a mathematical concept, or involve a mathematical concept, do not “recite” a mathematical concept.
Regarding “methods of organizing activity,” only activities that involve the following are included: “fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, and relationships or interactions between people.” Both activities of a single person and activities involving multiple people qualify for this category.
Regarding “mental processes,” i.e., “concepts performed in the human mind,” the USPTO provides the following examples: “observations, evaluations, judgments, and opinions.” Additionally, the “mental processes” group should be understood to refer to the “type of abstract idea, and not to the statutory category of the claim.” A claim does not recite a mental process if it cannot be practically performed in the human mind, but a claim that requires a computer can still recite a mental process.
III. Evaluating Whether a Judicial Exception is Integrated into a Practical Application
Under Step 2A, if a claim “integrates [a] recited judicial exception into a practical application of that exception,” then its subject matter is patent eligible, because the claim merely “recites” a judicial exception rather than being “directed to” that exception. For these purposes, the claim is evaluated as a whole (judicial exception and additional elements). Patent eligible applications of judicial exceptions include improving a computer or other technology, effecting a particular treatment or prophylaxis for a disease or medical condition, and implementing with a particular machine; courts look for these considerations to ensure that the claim does not merely represent the claimant’s efforts to “monopolize the judicial exception.”
IV. Requirements of a Prima Facie Case
The USPTO re-emphasized that the examiner carries the burden of establishing that claims are ineligible for patent under § 101. To establish the prima facie case required for rejection, examiners must identify the judicial exception relevant to the claim, identify any additional element, and explain why those elements are not sufficiently significant to overcome exception. When practicable, however, examiners should also indicate how subject matter eligibility rejections might be overcome.
V. Educating the Patent Examiners
The USPTO has taken steps to help examiners understand the revised guidelines for subject matter eligibility by publishing examples, implementing instructor and computer-based training, and stressing that examiners are expected to follow the 2019 PEG. Additionally, applicants who were twice rejected may appeal to the PTAB and rely on the 2019 PEG to support their argument that a rejection under § 101 is in error.