On December 10, 2014, the United States Patent and Trademark Office issued new interim guidelines for patent examiners to use to determine eligibility of patents in light of the Supreme Court’s recent opinions on the topic BilskiMayoMyriad, and Alice. These interim guidelines supplement the June 25, 2014, Preliminary Examination Instructions and supersede the earlier March 4, 2014, preliminary instructions.

On December 10, 2014, the United States Patent and Trademark Office issued new interim guidelines for patent examiners to use to determine eligibility of patents in light of the Supreme Court’s recent opinions on the topic BilskiMayoMyriad, and Alice. These interim guidelines supplement the June 25, 2014, Preliminary Examination Instructions and supersede the earlier March 4, 2014, preliminary instructions.

Like the Supreme Court’s decision in Alice itself (Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)), the most significant development from the new interim guidelines may be the confirmation that the Patent Office will apply the two-step test the Court set forth in Mayo is applied to all claims, including abstract ideas often associated computer related claims. Mayo Collaborative Serv. V. Prometheus Labs, 132 S. Ct. 1289 (2012). The flowchart below sets out the eligibility test (the Mayo test can be found in Steps 2A and 2B):

Click here to view image.

Several commentators, including Denis Crouch from Patently-O, have suggested that the guidelines may also make it easier to avoid the judicially created exception of natural phenomenon rather than an abstract idea. Applications that include a natural product claim have an additional analysis in step 2(A) to identify a possible further “product of nature” exception. This requires that the natural product in the claim be compared against the actual naturally occurring specimen. The analysis only continues to Step 2(b) if there are no markedly different characteristics shown rather than a more simple determination of whether an idea is abstract.

The interim guidelines also contain a number of examples of patentable and unpatentable claims, along with, a number of case summaries for all three judicial exceptions. However, given the recent activity in the computer science realm, that guidance may be the most noticeable addition. While the vast majority of summaries computer related abstract idea claims were unpatentable, including those in Alice, the Interim Guidelines also highlight and summarize the recent Federal Circuit case DDR Holdings, LLC v. Hotels.com, L.P. (December 5, 2014). In that case the Federal Circuit did find the claims patent eligible. The Court admittedly struggled with the first step in the Mayo test, identifying several possible abstract ideas contained the patent (although not finally settling on one). Nevertheless, the Court held that the claims did pass the second step of the Mayo test. Unlike the claims in Alice or Ultramercial, where the computer aspects of the claim are incidental to the abstract idea, the Court found that “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks” by creating a composite website by a third party providing incorporating information from multiple sources. This case could provide useful clues in determining what abstract ideas may be patent eligible.

While these guidelines immediately impact applications before the Patent Office, they also have wider implications for patent management strategies and patent litigation.