Last week we reported that the US Patent and Trademark Office published a much-anticipated revised Guidance on patent eligible subject matter. Now that I have had a few days to study the revised Guidance, re-read the previous guidance and other PTO memos, and also re-familiarize myself with the underlying court decisions, I am ready to share my initial thoughts.

Brief Background

The Guidance was released by the PTO on December 15, 2014. According to the PTO, it “offers a comprehensive view of subject matter eligibility in line with Alice Corp.MyriadMayo, and the related body of case law.” See 2014 Interim Guidance on Patent Subject Matter Eligibility. This Guidance supersedes the previously issued guidance from March 4th and supplements further examination instructions put out by the PTO on June 25th – just days after the Alice Corp. decision. The Guidance also explains how it should be used in view of the relevant sections of the MPEP (Manual of Patent Examining Procedure). For those of you not completely familiar with the topic of patent eligible subject matter, there are basically two things you need to know: (1) For an invention to be patent eligible it must fit into one of the four statutory (35 USC §101) classes of eligible subject matter – processes, machines, articles of manufacture, or compositions of matter. (2) However, there are three judicially created exceptions to these classes – laws of nature, natural phenomena, and abstract ideas. The Guidance deals with these exceptions. For further background information about the revised Guidance, links to the relevant case law, instructions for submitting written comments to the PTO, and details about a January 21, 2015 public forum on the topic, visit the PTO’s dedicated webpage.

My Initial Thoughts

The revised Guidance is a step in the right direction by the PTO to simplify the somewhat cumbersome and confusing patent claim analysis set out in the previous guidance and memo documents. The Guidance is an attempt to consolidate the separate frameworks the PTO had previously created for analyzing the patent eligibility of claims relating to laws of nature, natural phenomena, and natural products, versus claims relating to abstract ideas.  I agree with the PTO that it is important to have a guidance that “promotes examination efficiency and consistency across all technologies.”

It is also encouraging that the Guidance instructs the examiners to review “the entire application disclosure”, to give the claims their “broadest reasonable interpretation”, and to determine whether the “claims as a whole” are “directed to” patent eligible subject matter. The revised Guidance differs from the prior guidance in that the analysis had been based on claims merely “involving” an exception to patent eligible subject mater, rather than the new requirement of being “directed to” one of the exceptions.

The revised Guidance sets forth a two-step analysis (based on both the Alice Corp. and Mayodecisions) for determining subject matter eligibility. This two-step analysis is more in line with what was published by the PTO back in June for analyzing inventions involving abstract ideas. More importantly, this two-step analysis replaces the unwieldy weighing and balancing test published back in March 2014 for evaluating inventions relating to laws of nature, natural phenomena, and natural products. This weighing and balancing test had involved as many as twelve factors for determining whether the invention was “significantly different” than a patent ineligible exception.

The new two-step analysis asks:

(Step 1) Whether the claim is directed to a law of nature, a natural phenomenon, or an abstract idea (i.e. the exceptions to patent eligible subject matter). If the answer is “No”, the claim is patent eligible. If “Yes”, the claim must then be analyzed under Step 2 to determine whether the claim recites a patent-eligible application of the exceptions.

(Step 2) Whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to “significantly more” than the exceptions.

However, and I emphasize the word “however”, the revised Guidance takes what I see as a confusing detour. If the claim relates to what the PTO calls a “nature-based product”, a side-analysis must first be conducted before proceeding to Step 2. This side analysis asks whether there are “markedly different characteristics” that distinguish the nature-based product from its naturally occurring counterpart in its natural state. Whether the nature-based product is “markedly different” is determined by considering the “structure, function and/or other properties” of the product. If the product is then deemed “markedly different”, the inquiry ends and the product is patent eligible. If not, the product is then analyzed under Step 2 to see if the claim amounts to “significantly more” than the exception. A bit confusing? I think so, as it took me several readings of the revised Guidance to understand what exactly the PTO is now proposing.

Does the revised Guidance go far enough?

Let me end by saying that the revised Guidance is certainly a step in the right direction to bring uniformity and predictability for analysis of claims directed to laws of nature, natural phenomenon, or abstract ideas. I like that the test for patent eligibility is taken directly from the latest Supreme Court decisions – Alice Corp. and Mayo. However, as pointed out, the Guidance does seem to take a somewhat confusing, and probably unnecessary, detour for analyzing nature-based products. I am sure I will have more to say as I read and re-read the Guidance, the commentary of others, and hopefully have an opportunity to attend the January public forum.