On January 4th, the USPTO released new patent subject matter eligibility guidelines (“2019 Revised Patent Subject Matter Eligibility Guidance”) to be used by its patent examiners when determining whether a patent claim is directed to subject matter that is eligible for patent protection in the United States.

Under the previous test for subject matter eligibility set forth in the 2014 Interim Guidance on Patent Subject Matter Eligibility, a claim directed to one of the four statutory patent-eligible classes (i.e., process, machine, manufacture, or composition of matter) is patent eligible if either of the following is true:

(1).      The claim is not directed to a judicial exception (a law of nature, a natural phenomenon, or an abstract idea); or

(2).       The claim is directed to a judicial exception, but amounts to significantly more than the judicial exception.

The new 2019 guidelines set forth an additional two-part test (referred to below as “the new test”) to be implemented by patent examiners when assessing whether a claim is “directed to a judicial exception” under the first prong of the test set forth above. These new guidelines narrow the myriad of categories that may potentially qualify as “abstract ideas” and also outline certain characteristics that may permit even these category-suspect claims to be deemed “not directed to a judicial exception” and therefore patent eligible.

Under the first prong of the new test, a claim cannot be considered “directed to an abstract idea” unless it recites subject matter pertaining to one of three qualifying categories or is otherwise approved by a USPTO Technology Center Director as being directed to an abstract idea. These three qualifying categories include  (1) mathematical concepts; (2) certain methods of organizing human activity; and (3) mental processes.

The second prong of the new test provides that a claim directed to one of the above three categories may still be patent eligible provided that the claim recites one or more additional elements that integrate the judicial exception into a practical application. The new guidelines also list several considerations that may indicate that an additional claim element or combination of claim elements may have integrated a judicial exception into a practical application.  These considerations listed include, without limitation:

  • an additional claim element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
  • an additional claim element applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
  • an additional claim 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 claim element effects a transformation or reduction of a particular article to a different state or thing; and
  • an additional claim 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.

The USPTO’s ultimate goal with this revised guidance is to draw distinctions between claims to principles in the abstract and claims that integrate those principles into a practical application.  While the complexity of applying this new approach remains uncertain, it seems likely that these new guidelines will make it more difficult for patent examiners to sustain claim rejections based on subject matter eligibility.