More on the Revised Subject Matter Eligibility Guidance
In a recent edition of our IP newsletter, we introduced the U.S. Patent and Trademark Office’s (USPTO) new guidelines for subject matter eligibility. Below, we provide additional thoughts and strategies for pursuing patent applications in light of these new guidelines.
The “2019 Revised Subject Matter Eligibility Guidance” (Revised Guidance), effective January 7, 2019, varies the analysis for patent examiners and administrative patent judges in applying the Alice/Mayo test. Analysis under the Revised Guidance begins with a consideration of whether the claim limitations recite a process, a machine, a method of manufacture, or a composition of matter. This is Step 1 in the Alice/Mayo test. If a claim is not within one of these statutory categories, it is ineligible. If the claim is to a statutory category, per Alice/Mayo Step 2A, the examiner is to consider whether the claim limitations are directed to a “judicial exception”, namely, an abstract idea, a law of nature, or a natural phenomenon.
If the result of this inquiry is “no”, the claim is eligible. If “yes”, the examiner now is instructed to proceed to consider whether the judicial exception is “integrated” into a practical application by the claim limitations. To carry out this determination, the examiner is asked to identify all elements and combinations of elements in addition to the judicial exception, and then to decide whether such elements and combinations integrate the judicial exception into the required practical application. For this part of the procedure, it is expressed within the Revised Guidance that the examiner is not to consider whether the additional elements or combinations thereof “represent well-understood, routine, conventional activity”. Any such elements and combinations are not to be discounted for this reason. The question of whether they are well-understood, routine, or conventional is left for the Alice/Mayo Step 2B test to ascertain whether the additional elements or combinations thereof add something “significantly more” to a claim. The question is not to be imported into the review for integration. The Revised Guidance provides several examples of situations in which additional elements or combinations of elements likely sufficiently integrate the judicial exception to assist in the examiner’s analysis.
Lastly, it is observed that the Revised Guidance alters Step 2A of the Alice/Mayo analysis for abstract ideas versus laws of nature and natural phenomenon. If the examiner finds specific claim limitations that the examiner believes to recite an abstract idea, as opposed to a law of nature or a natural phenomenon, the examiner is instructed to compare such limitations to three distinct “groupings”; namely, mathematical concepts, methods of organizing human activity, and mental processes. Even if the claim limitations avoid these groupings, the Revised Guidance further permits the examiner in “rare circumstances” to hold the limitations nonetheless as reciting an abstract idea. Once the limitations are regarded as reciting an abstract idea, the analysis proceeds to the integration inquiry discussed above for judicial exceptions generally. If no integration is found, the examiner moves to the Alice/Mayo Step 2B inquiry of whether the claim contains an element or a combination of elements that amount to “significantly more” than the judicial exception in order to make the claim eligible.
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