USPTO: Updated Examiner Patent Eligibility Guidelines By Jennifer J. Jedra

The U.S. Patent and Trademark Office (USPTO) on July 30, 2015, published an update to its examiner guidelines on patent subject matter eligibility. 80 Fed. Reg. 45429, 7/30/2015. Also included are appendices providing examples, an index of examples, and a hyperlinked list of court decisions on patent subject matter eligibility.

Responding to public comments on the 2014 Interim Guidance on Subject Matter Eligibility Guidance, the update provides, among other things: (1) examples of claims directed to abstract ideas, (2) further explanation of the “markedly different analysis,” (3) further information on how examiners identify abstract ideas, (4) discussion of the prima facie case and the role of evidence, (5) information on examiner use of the prior guidelines, and (6) an explanation of the role of preemption and the streamlined analysis.

The discussion on “abstract ideas” notes that courts have not defined the term but have identified it by examples that need to be ineligible to protect the “building blocks of ingenuity.” It reminds examiners that judicial exceptions to eligibility need not be old or long-prevalent, pointing out that the Supreme Court has found ineligibility even with novel subject matter. The discussion specifically addresses (1) fundamental economic practices, (2) certain methods of organizing human activity, (3) an idea “of itself,” i.e., one that can be performed in the human mind or with pen and paper, and (4) mathematical relationships/formulas.

The discussion on the requirements of a prima facie case points out that the examiner bears the burden of sufficiently explaining an ineligibility decision to give the applicant the ability to respond effectively. The examiner is expected to clearly articulate the reasons the claimed invention is ineligible, identifying the judicial exception recited by the claim, why it is considered an exception, and why additional elements do not make the claim significantly more than the exception. “This rationale may rely, where appropriate, on the knowledge generally available to those in the art, on the case law precedent, on applicant’s own disclosure, or on evidence,” according to the update.

The discussion clarifies that preemption is not a separate consideration but instead is already incorporated in the current analysis. While preemption is the driving concern for patent ineligibility, “the courts do not use preemption as a stand-alone test for eligibility. Instead, questions of preemption are inherent in the two-part framework in the Supreme Court decisions,” according to the update.

The USPTO is seeking further public comments on this update, which must be received by October 28, 2015, to ensure consideration.

To read the Federal Register notice, click here.  To see the text materials of the new update on the USPTO website, click here.