On 16 December 2014, the US Patent & Trademark Office (USPTO) published updated interim guidance (view here) for examiners to determine patent eligibility under 35 U.S.C. §101 of the U.S. Code. The guidance provides information on the judicially recognised exceptions of laws of nature, natural phenomena and abstract ideas.

The publication follows earlier preliminary examination instructions (view here) released in June 2014 following the U.S. Supreme Court decision in Alice Corporation Pty. Ltd v. CLS Bank International et al. The intention of the preliminary examination instructions was to outline a change in practice at the USPTO in applying a two-step test that was previously used to examine claims involving laws of nature (in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. (2012)) to also assess claims that involved abstract ideas.

According to the June preliminary instructions, all claims (product and process) to an abstract idea were to be assessed using the two step test. The first step is a determination whether the claim is directed to an abstract idea. The second step is to determine, for claims directed to an abstract idea, whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to “significantly more” than the abstract idea itself. There was some uncertainty following the preliminary instructions as to how the USPTO would assess the “significantly more” qualification for computer-implemented inventions.

The updated interim guidance confirms that the two step test should be applied to all judicial exceptions (law of nature, natural phenomenon, or an abstract idea) and expands on the assessment of whether a claim includes “significantly more” than an abstract idea or other judicial exception.

The following are examples that may be enough to qualifyas “significantly more”:

  • Improvements to another technology or technical field;
  • Improvements to the functioning of the computer itself;
  • Applying the judicial exception with, or by use of, a particular machine;
  • Effecting a transformation or reduction of a particular article to a different state or thing;
  • Adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application; or
  • Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.

Examples of limitations that are not enough to qualify as “significantly more” are:

  • Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer;
  • Simply appending well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry;
  • Adding insignificant extrasolution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea; or
  • Generally linking the use of the judicial exception to a particular technological environment or field of use.

A number of examples on how to apply to test are provided particularly for nature-based products. A flow chart has been provided to help USPTO examiners follow the test, this can be viewed here. Some examples of the two step test analyse claims of a number of cases which the Supreme Court has already decided. This includes the Alice decision which is unsurprisingly found to not be patent eligible under the two step test. A summary of relevant court decisions is also provided, including the recent U.S. Court of Appeals for the Federal Circuit decision in DDR Holdings, LLC v. Hotels.com L.P., where a claim to “A system useful in an outsource provider serving Web pages offering commercial opportunities…” was found to be patent eligible after applying the two step test of Mayo/Alice.

The USPTO has set a consultation period expiring on 16 March 2015 for comments from the public (that will be made public) on the guidance and invited additional suggestions on claim examples to help demonstrate the application of the guidance. Also, according to the guidance, the USPTO plans to hold a public forum in mid-January 2015 in order to discuss the guidance.