On January 4, 2019, the USPTO provided updated subject matter eligibility guidelines to resolve 35 USC Section 101 based rejections. Director Iancu stated, “[t]hese guidance documents aim to improve the clarity, consistency, and predictability of actions across the USPTO … . [The office] will provide training to examiners and administrative patent judges on the released documents to ensure that guidance is being properly administered.”
The revised guidelines makes two primary changes of applying the first step of the U.S. Supreme Court’s Alice test to determine whether a claim is “directed to” a judicial exception.
- First, key concepts to identify an abstract idea (mathematical concepts, certain methods of organizing human activity, and mental processes) are explained.
- Second, a two-prong inquiry for whether a claim is “directed to” a judicial exception is provided:
- In the first prong, examiners will evaluate whether the claim recites a judicial exception.
- In the second prong, examiners will evaluate whether the claim recites additional elements that integrate the identified judicial exception into a practical application.
If a claim both recites a judicial exception and fails to integrate that exception into a practical application, then the claim is “directed to” a judicial exception. In such a case, further analysis pursuant to the second step of the Alice test will be required.
To summarize, although it is too early to determine how this guidance will be treated by the examiners, overall this is a positive development and seems to fulfill Director Iancu’s November 26, 2018 promise to clarify subject matter eligibility analysis for patenting, under 35 U.S.C. section 101, software based inventions.
As a reminder, Applicants should be mindful of integrating their claims towards a particular practical application to avoid an ‘abstract idea’ rejection. Existing applications may be amended to narrow the claims to a particular practical application as long as support is provided in the specification.
The updated guidance goes in effect on Monday, January 7, 2019. The guidance can be downloaded here.