U.S. Patent Office Revises Guidance on Subject-Matter Eligibility

The U.S. Patent Office has issued its much-anticipated update to the guidance on examining patent applications for compliance with the subject-matter eligibility provisions of 35 U.S.C. § 101. Those familiar with the situation will know that the U.S. Supreme Court issued a series of decisions in recent years tweaking the standard for determining what kinds of innovations are eligible to receive patent protection. The test is commonly described as having three primary standards: (1) the innovation must fall within one of the categories listed in the statute (process, machine, manufacture, or composition of matter); (2) the innovation must not be “directed to” a judicially created exception to those categories (laws of nature, natural phenomena, abstract ideas); and (3) if the innovation is directed to one of those exceptions, it may still be patentable if there is “significantly more” to the innovation than the bare exception. Generally, the updated test has made securing patent protection for certain kinds of innovations in the U.S., such as software and medical diagnostics, more difficult, if not impossible. Both the U.S. Patent Office and the U.S. court system have recognized that it is difficult to apply the test in a consistent, predictable way.

In an attempt to bring more clarity, the revised guidance makes two major changes to existing guidance for applying the test. One change is that the guidance may significantly restrain an examiner’s ability to go beyond an enumerated list of pre-approved abstract ideas when considering whether to reject a claim as directed to a patent-ineligible abstract idea. It states that examiners must “refer to the subject matter groupings of abstract ideas in Section I,” and concludes that claims not falling within those groupings should only be considered abstract in “rare circumstance[s].” The procedures require any such rejection to be approved by a Technology Center Director. Imposing another level of review will likely be a significant deterrent to straying from the list.

The revised guidance goes on to explain that claims involving a judicial exception are not “directed to” that exception when they “integrate[] a judicial exception into a practical application ….” Examples where claims set forth a practical application include improving the functioning of a computer, improving other technology or a technical field, effecting a particular treatment, implementing the exception utilizing a particular machine that is integral to the claim, transforming or reduce an article to a different state or thing, or otherwise applying the exception in a way that amounts to more than linking to a particular technological environment. The guidance emphasizes that the inquiry whether additional elements are routine or conventional should not be considered during this step in the analysis because “a claim that includes conventional elements may still integrate an exception into a practical application ….”

For certain kinds of innovations, this updated guidance may increase the likelihood that patent protection may be obtainable. For example, control systems and software may be more difficult to reject as abstract ideas because examiners may no longer dismiss the hardware implementation as routine or conventional when considering whether the claims are “directed to” an abstract idea. Innovators and patent practitioners should be aware of the new guidance, and potentially expanded opportunities to obtain patent claims under the revised guidelines.

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