Patent Office Takes Steps Towards Improving Consistency of Analysis of Patent-Eligible Subject Matter

Patent subject matter eligibility under 35 U.S.C. 101 has been the subject of much attention since the United States Supreme Court (USSC) handed down its decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014). Recently, much of that attention has focused on how to apply the USSC’s framework for evaluating eligibility (the Alice/Mayo test).

Properly applying the Alice/Mayo test in a consistent manner has proven to be difficult and has caused uncertainty. Because of this, it has become difficult for inventors, stakeholders, and practitioners to reliably and predictably determine if a computer-implemented invention is patent-eligible. For example, in certain instances in which claims in one application are deemed to be directed to an abstract idea and considered ineligible, other claims in another application having similar structure and subject matter are considered patent-eligible.

In January 2019 the Revised Patent Subject Matter Eligibility Guidance (Guidance) was released in an attempt to improve consistency and predictability of the Alice/Mayo analysis.

The Guidance defines what an abstract idea is by providing groupings of abstract ideas and examples of each of the groupings. The groupings of abstract ideas include mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations), certain methods of organizing human activity (fundamental economic principles or practices and commercial or legal interactions), and mental process (concepts performed in the human mind).

The guidance then provides instructions for analyzing the claims, which is broken down into Step 2A and Step 2B. Step 2A is broken down into Prong One and Prong Two.

Prong One involves determining whether the claim recites a judicial exception, such as an abstract idea. If the claim recites an abstract idea, the examiner is to identify the specific limitation in a claim that the examiner believes to be the abstract idea and determine whether the abstract idea falls within one of the specific groupings mentioned above. If the specific limitation falls within one of the groupings, the claim requires further analysis in Prong Two. If the specific limitation does not fall within one of the groupings, the claim should be considered patent eligible.

Prong Two involves determining whether the claim recites additional elements that integrate the exception into a practical application of that exception (meaningful limitations). The examiners are instructed to evaluate the claim by identifying additional elements in the claim beyond the judicial exception and evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.

An important takeaway from the Guidance is that Prong Two excludes consideration of whether the additional elements represent well-understood, routine, or conventional activity. Because revised Step 2A does not evaluate whether an additional element is well-understood, routine, conventional activity, a claim that includes conventional elements may still integrate an exception into a practical application, thereby satisfying the subject matter eligibility requirement of Section 101.

In the context of revised Step 2A, the following exemplary considerations are indicative that an additional element (or combination of elements) may have integrated the exception into a practical application:

  • an additional element reflects an improvement in the functioning of a computer or an improvement to other technology or technical field
  • an additional element that applies or uses a judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition
  • an additional element implements a judicial exception with, or uses, a judicial exception in conjunction with a particular machine or manufacture that is integral to the claim
  • an additional element effects a transformation or reduction of a particular article to a different state or thing
  • an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception

If the additional elements of the claim do not integrate the exception into a practical application of that exception, the claim may be still be considered patent eligible under Step 2B. According to the Guidance, if the additional elements of the claim amount to significantly more than the exception itself, the claim should be considered patent eligible. For example, if the elements add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, an inventive concept is established, and the claim is patent eligible under Step 2B.

It seems that the 2019 Guidance provides the clearest and most patent-friendly instructions for Examiners to determine subject matter patent eligibility since the Alice decision came out. The Guidance should eliminate blanket statements and vague rejections commonly made for software inventions by instructing Examiners to specify which grouping an identified abstract idea is part of. Additionally, the Guidelines highlight that a claim can include conventional elements and still integrate an exception into a practical application under Step 2A, which should reduce the number of rejections based on eligibility grounds. The 2019 Guidance demonstrates that USPTO Director Andrei Iancu is actively attempting to eliminate inconsistent application of the Alice/Mayo test, which will strengthen patent protection and thereby increase the value of patents in the United States.

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