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New USPTO Eligibility Guidance: Does Your Claimed Invention Have A Practical Application?

Posted on Jan 9, 2019 in News

Patent applications directed to computer implemented methods, methods of diagnosis and treatment, and those that make use of naturally occurring products, have been particularly affected by the Supreme Court’s Alice, Myriad, and Mayo decisions with regard to whether the claims are considered patent eligible subject matter.

In a step which should provide some relief and clarity for patent applicants and practitioners, the USPTO has just issued its 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 Guidance”). The 2019 Guidance updates the method by which patent examiners evaluate the subject matter eligibility of pending claims.

The USPTO’s existing framework for analysis of subject matter eligibility is essentially unchanged, and can be summarized as follows (See MPEP § 2106):

1. Determine whether the claim is directed to one of the four statutory categories (i.e., process, machine, manufacture, or composition of matter);

2A. Determine whether the claim is “directed to” a law of nature, natural phenomenon, or an abstract idea (i.e., a judicial exception);

2B. Make a determination whether the claim recites additional elements that amount to “significantly more” than the judicial exception.

The difference between the previous guidance (see our previous posting regarding the Interim Guidance on Patent Subject Matter Eligibility dated December 16, 2014) and the 2019 Guidance is in the Step 2A analysis. While previously, a claim directed to a law of nature, natural phenomenon, or an abstract idea (i.e., a judicial exception) required an analysis of whether there is a marked difference between, for example, a nature based product recited in the claim and its naturally occurring counterpart in its natural state. These differences could be shown by, for example, structural differences, or different functional characteristics. (See 2014 Interim Guidance at page 19).

In contrast, according to the 2019 Guidance, the new step 2A analysis requires a two-pronged analysis. The first prong is very similar to the previous guidance, and requires an evaluation of whether the claim recites a judicial exception (i.e., law of nature, natural phenomenon, or an abstract idea), and if it does to proceed to Prong 2.

According to Prong 2, if the claim recites one of the judicial exceptions, examiners are to evaluate whether the judicial exception is integrated into a “practical application”. (See 2019 Guidance at page 18). A claim is not “directed to” a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception. (See 2019 Guidance at page 13). Exemplary “practical applications” include:

  • improving the function of a computer;
  • treating or preventing a disease or medical condition;
  • transforming or reducing a particular article to a different state or thing;
  • linking the judicial exception to a particular technological environment such that it does not an monopolize the exception.

See 2019 guidance at pages 19 – 20.

Interestingly, the 2019 Guidance sets forth that examiners are not to make a determination of whether or not the claims contain an additional element which is well understood, routine, or conventional activity. If necessary, this determination is to be made in the step 2B analysis, below. (See 2019 Guidance at page 22).

If the claim has been determined to be directed to a judicial exception under Prongs 1 and 2 of the step 2A analysis, then examiners are to proceed to the step 2B analysis. This is very similar to the previous guidance, and requires a determination of whether the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element.

These additional elements must provide “significantly more” than the recited judicial exception itself. If the examiner determines that the element (or combination of elements) amounts to significantly more than the exception itself, then the claim is directed to patent eligible subject matter. Similar to the previous guidance, if the claims contain only additional elements which are well understood, routine, or conventional activities, then the claims are not patent eligible subject matter.

Takeaway

The 2019 guidance provides useful roadmap for inventors and practitioners. For already pending applications which may be facing a rejection of the claims as being directed to ineligible subject matter, amendments and arguments can be made to emphasize that the claims are directed toward a practical application of a natural process, or product, or abstract idea.

For future applications, clearly it is important to emphasize that the claims are directed to a practical application of any concept which may be considered one of the judicial exceptions. It may also be useful emphasizing in the specification the practical nature of the invention.

Joe Murphy

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