The USPTO has published revised subject matter eligibility guidelines for examination of claims under 35 U.S.C. 101, which went into effect on January 7, 2019. At its core, the revised guidelines clarify what constitutes an “abstract idea” in Step 2A of the Alice/Mayo test. Only claims that recite the following subject matter should be treated as reciting abstract ideas: (a) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations; (b) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and (c) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Aside from rare circumstances, no other claimed subject matter should be treated as an abstract idea.
The new guidelines also revise the procedure for analyzing claims at Step 2A of the Alice/Mayo test. At Step 2A, a determination is first made as to whether a claim recites a judicial exception, namely a law of nature, a natural phenomenon, or an abstract idea (according to the groupings enumerated in the 2019 PEG and listed in the paragraph above). If the claim does not recite one of these judicial exceptions, then it is patent eligible and the Section 101 analysis is stopped. On the other hand, if it is determined that the claim does recite a judicial exception, then the claim must be further analyzed to consider whether the judicial exception is integrated into a practical application of the exception. If the claim as a whole integrates the recited judicial exception into a practical application, then it is not “directed to” a judicial exception under Step 2A and is patent eligible. The guidelines note that “[a] claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” If, however, the claim does not integrate the exception into a practical application, then the claim is “directed to” the recited judicial exception and the eligibility analysis must move to Step 2B of the Alice/Mayo test (evaluating whether the claim provides an inventive concept, i.e. whether the additional elements amount to significantly more than the exception itself).
The new guidelines are applicable to all applications filed before, on, or after the January 7, 2019 effective date. In a set of Frequently Asked Questions regarding the 2019 PEG, the USPTO has indicated that any application that has a pending Section 101 rejection must be reviewed in light of the new guidelines when next due for examiner action. Thus, there is hope that more pending Section 101 rejections may be withdrawn (especially those rejections that have found claims to be drawn to an abstract idea), and that fewer applications will receive Section 101 rejections in the future.
The 2019 Revised Patent Subject Matter Eligibility Guidance published in the Federal Register can be accessed at https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf and a copy of the Frequently Asked Questions on the 2019 PEG can be accessed at https://www.uspto.gov/sites/default/files/documents/faqs_on_2019peg_20190107.pdf.
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2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG)
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