The U.S. Patent and Trademark Office (USPTO) issued new guidance effective January 7, 2019 to its examiners and administrative judges for evaluating what inventions are eligible for patenting under 35 U.S.C. § 101. The guidance is expected to result in fewer patent applications being rejected by the USPTO on patent eligibility grounds.
Since the U.S. Supreme Court decision in Alice Corp. v. CLS Bank International, which held that patent claims involving a computerized trading platform used for conducting financial transactions covered abstract ideas that were ineligible for patent protection, lower courts and the USPTO have grappled with the issue of what inventions are eligible for patent protection. They have decided eligibility by comparing inventions sought to be patented to previous court decisions. This approach, as noted in the USPTO guidance, has become impractical due to the growing volume of eligibility decisions and the fact that similar inventions have been found eligible and ineligible in different cases. The new guidance aims “to improve the clarity, consistency and predictability of actions across the USPTO" according to Andrei Iancu, Director of the USPTO.
The USPTO has relied on the two-step Alice/Mayo test for determining patent eligibility: (1) determine whether the claim being examined is directed to an abstract idea, law of nature, or natural phenomena (the “judicial exceptions”) and, if so (2) determine whether the claim embodies an inventive concept that amounts to significantly more than the judicial exception, thereby amounting to patent eligible subject matter. The new guidance makes two important changes to how patent examiners apply the first step of this test, which determines whether a claim is “directed to” a judicial exception.
First, the guidance identifies three groups of inventions that the USPTO believes constitute abstract ideas based on court decisions:
Claims that do not describe matter that falls within these three groupings of abstract ideas should not be treated as directed to abstract ideas. The guidance notes that there may be a “rare circumstance” in which a claim described an abstract idea that does not fall into one of the groups. Such an exception must be approved by the Technology Center Director and the justification noted in the record.
Second, if the claim being examined describes an abstract idea or other judicial exception, the examiner must determine whether the abstract idea or other judicial exception is "integrated into a practical application." If so, the claim is eligible, and this concludes the eligibility analysis. If not, then the examiner must further analyze the claim under step (2) of the Alice/Mayo test.
The guidance provides the following non-exclusive list of examples of abstract ideas and other judicial exceptions that have been integrated into a practical application:
Due to a case that may be taken up soon by the U.S. Supreme Court, the USPTO may also have to revise a separate guidance relating to step (2) of the Alice/Mayo test, on whether an element (or combination of additional elements) in a patent claim represents an “inventive concept” or is well-understood, routine, conventional activity.
On January 7, 2019, the Supreme Court issued an order asking the U.S. Justice Department Solicitor General to file a brief explaining the views of the government in HP Inc. v. Steven E. Berkheimer. That order indicates the Supreme Court is looking carefully at the holding in HP v. Berkheimer case. In that case, the U.S. Court of Appeals for the Federal Circuit held that the question of whether certain claim limitations represent well-understood, routine, conventional activity to a person of skill in the art is a factual issue that may be disputed.
The current USPTO guidance on this issue has made it somewhat more difficult to reject a claim based on step 2 of the Alice/Mayo test, because it requires that the examiner support such a rejection with specific evidence from the applicant’s own statements in the specification or during prosecution, or an express citation to a document, case, or official notice of the well-understood, routine, conventional nature of the additional element(s). If the Supreme Court accepts the HP v. Berkheimer case, its decision could alter this approach.