On Thursday, July 30, the USPTO released new guidelines in the controversial area of subject matter eligibility, importantly reminding Examiners they are limited to only those categories of subject-matter eligibility that have been previously defined by the Court of Appeals for the Federal Circuit (CAFC). The USPTO’s guidelines serve to help Examiners define “abstract ideas,” as the courts have declined to provide the definition, and this is a controversial, changing area for patent law. The guidelines are published on the USPTO’s website here.

In the wake of the CAFC’s decisions in Alice Corp v. CLS Bank and Mayo v. Prometheus, courts have failed to define “abstract ideas,” and the USPTO has struggled in interpreting it across the board. As a result, some critics have loudly sounded the alarm that virtually nothing is patentable anymore. The most recent guidance indicates that the USPTO is trying to respond to these critics. Indeed, the USPTO euphemistically refers to “pathways to eligibility” throughout the guidance document.

The guidance importantly instructs Examiners to only find abstract ideas where courts have previously found them. Examiners should not identify a claimed concept as an abstract idea “unless it is similar to at least one concept that the courts  have identified as an abstract idea.” While this language may provide some comfort to those concerned that Examiners will find abstract ideas everywhere, it remains to be seen how creative Examiners will be in determining what is “similar” to concepts the courts have identified. Perhaps with this in mind, the guidance goes on to define the four concepts that the courts have identified as abstract ideas: (1) fundamental economic practices, (2) certain methods of organizing human activity, (3) an idea of itself, and (4) mathematical relationships/formulas. The guidance also provides specific examples and judicial language in support for each of the four identified concepts.

An additional concern that patent applicants have had is that because subject matter eligibility is purely a question of law, Examiners do not need to offer any proof to meet a prima facie case of subject matter ineligibility. Unfortunately, the guidance does little to relieve these concerns. Rather, the guidance emphasizes that as a question of law, no evidence is required. Thus, Examiners may meet their burden by simply explaining why the claims are unpatentable (though they must do so “clearly and specifically”). This guidance leaves little teeth in an argument that the Examiner has not met their prima facie burden, and applicants will have to rely on more specific arguments to fight the rejections. However, applicants may be able to move their application forward by forcing the Examiner to identify the specific concept that is abstract, and also the claim elements that “do not amount to significantly more.”

Going forward with patent applications, companies and inventors need to keep in mind that this area of the law is continuing to develop and may see substantial changes over the next few years. It will be best practice to steer clear of any potential subject matter eligibility issues by drafting claims to specifically avoid the four concepts defined by the courts and described in the USPTO’s guidance. If you are currently prosecuting a patent application, the latest guidance may help you to argue against an Examiner, particularly if the Examiner does not clearly state how your invention fits into one of the defined categories.