101 Guidance To Relax Patentability Standard?
Today, the USPTO announced revised guidance for subject matter eligibility under 35 U.S.C. § 101 (here). The USPTO also announced guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions (here). The documents will be published in the Federal Register on Monday, January 7, 2019. While these documents request comments from the public, both are effective on Monday.
The “2019 Revised Patent Subject Matter Eligibility Guidance” makes two primary changes to how patent examiners apply the first step of the U.S. Supreme Court’s Alice/Mayo test, which determines whether a claim is “directed to” a judicial exception.
- First, in accordance with judicial precedent and in an effort to improve certainty and reliability, the revised guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes certain groupings of subject matter: mathematical concepts, certain methods of organizing human activity, and mental processes.
- Second, the revised guidance includes a two-prong inquiry for whether a claim is “directed to” a judicial exception. In the first prong, examiners will evaluate whether the claim recites a judicial exception and if so, proceed to the second prong. In the second prong, examiners 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/Mayo test is required.
While this test mentions patent examiners specifically, it is expected that the entire agency (i.e., PTAB judges) will also follow this framework. (It remains to be seen whether the Federal Circuit will agree that reigning in the abstract idea step of Alice/Mayo to focus on judicial exceptions is consistent with established law).
As to the second set of guidelines, the “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112” this guidance emphasizes various issues with regard to § 112 analysis, specifically as it relates to computer-implemented inventions. The guidance describes proper application of means-plus-function principles under § 112(f), definiteness under § 112(b), and written description and enablement under § 112(a).
This effort addresses an issue that the Office consistently confuses.