USPTO Released 2014 Interim Guidance on Patent Subject Matter Eligibility

December 16, 2014Alerts Intellectual Property Alert

On December 15, 2014, the U.S. Patent and Trademark Office (USPTO) released its much awaited revised guidelines regarding patent subject matter eligibility. The “2014 Interim Guidance on Patent Subject Matter Eligibility ” (“Interim Eligibility Guidance”) was published in the December 16, 2014, Federal Register.

Effective December 16, 2014, the Interim Eligibility Guidance supplements the June 25, 2014, Preliminary Examination Instructions in view of the Supreme Court decision in Alice Corp. (June 2014 Preliminary Instructions) and supersedes the March 4, 2014, Procedure for Subject Matter Eligibility Analysis of Claims Reciting or Involving Laws of Nature/Natural Principles, Natural Phenomena, and/or Natural Products (March 2014 Procedure) issued in view of the Supreme Court decisions in Myriad and Mayo.

Like the March 2014 Procedure, the Interim Eligibility Guidance provides a two-part/three-inquiry framework for determining patent subject matter eligibility. Under this framework, a patent examiner determines whether a claim as a whole satisfies the requirement of patent subject matter eligibility under 35 U.S.C. § 101, and whether to raise a rejection under this section by finding answers to the following three questions:

Step 1: Is the claim to a process, machine, manufacture or composition of matter?

Step 2A: Is the claim directed to a law of nature, a natural phenomenon or an abstract idea (judicially recognized exceptions)?

Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?

However, unlike the March 2014 Procedure, the last two inquiries of the Interim Eligibility Guidance determine whether a claim is “directed to” an exception and recites “elements that amount to significantly more,” while the counterparts in the March 2014 Procedure ask whether a claim “recite[s] or involve[s]” an exception and “recite[s] something significantly different than” a judicial exception. To that end, the Interim Eligibility Guidance provides detailed guidelines and examples. Notably, the Interim Eligibility Guidance does not have the “12-factor test” set forth in the March 2014 Procedure.

Since its issuance, the March 2014 Procedure has been criticized by the public, in particular the life science community. One of the defects criticized is that it focuses too much on structural differences and ignores functional differences between a claimed product and a natural product in the “significantly different” inquiry. In view of public feedback, the Interim Eligibility Guidance has now made it clear that “changes in functional characteristics and other non-structural properties can evidence markedly different characteristics.” As such, the Interim Eligibility Guidance is less harsh than the March 2014 Procedure and should be a welcome change for patent applicants. Additionally, 10 groups of 37 examples have been made available on the USPTO website for use in conjunction with the 2014 Interim Eligibility Guidance.

With respect to computer-related inventions, the Interim Eligibility Guidance does not present any substantial change with respect to the June 2014 Preliminary Instructions and is largely a reiteration of existing case law. As for the requirement that an invention must involve “significantly more” than simply applying an abstract idea, the Interim Eligibility Guidance lists some useful examples of limitations that may be enough to satisfy this requirement in the computer context. These examples include improvements to another technology or technical field, improvements to the functioning of the computer itself and effecting a transformation of a particular article to a different state or thing.

The Interim Eligibility Guidance also emphasizes that each claim must be considered “as a whole” and that individual elements viewed on their own may not appear to add significantly to a claim, but when combined may amount to significantly more than the exception. This can have particular relevance in the computer context where the individual limitations as recited clearly demonstrate that the claim does not “tie up any judicial exception such that others cannot practice it.” For example, the Interim Eligibility Guidance explains that a claim directed to a robotic arm assembly having a control system that operates using mathematical relationships is clearly not an attempt to tie up use of the mathematical relationships and would not require a full analysis to determine eligibility.

If you have any questions regarding this alert, please contact any member of Fox Rothschild’s Intellectual Property Department.