Summary: The United States Patent and Trademark Office (USPTO) recently published its next wave of “guidelines” to help instruct patent examiners on how to evaluate patent eligibility under 35 U.S.C. § 101.  This represents the third publication in a little over a year since Alice Corp. v. CLS Bank Intl. was decided by the Supreme Court.  The update primarily provides summaries of some of the most recent decisions on subject matter eligibility, and also sets out four categories of “abstract ideas” that are not subject matter eligible: “Fundamental economic practices,” “certain methods of organizing human activity,” “an idea ‘of itself,’” and “mathematical relationships/formulas.”

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The United States Patent and Trademark Office (USPTO) has taken the next step toward establishing definitive guidelines on subject matter eligibility following last year’s U.S. Supreme Court decision in Alice Corp. v. CLS Bank Intl.

The patentability of abstract ideas takes front and center in the USPTO’s latest publication, “July 2015 Update: Subject Matter Eligibility,” posted last week on the USPTO website with a parallel notice in the Federal Register.  Like the preliminary and interim notices that preceded it, the update lacks hard and fast definitions for claims that fall into the abstract idea exception to patentability.  Rather, its main focus is on examples drawn from the fast-growing body of case law on the topic.  This is, as the Office points out, by necessity:

The abstract idea exception, like the other judicial exceptions, was created by the courts to protect the building blocks of ingenuity, scientific exploration, technological work, and the modern economy.  Because the courts have declined to define abstract ideas, other than by example, the [USPTO] instructs examiners to refer to the body of case law precedent in order to identify abstract ideas by way of comparison to concepts already found to be abstract.

July 2015 Update, at p. 3.

The update does not lack for trying.  It retrospectively analyzes a dozen or so claims excerpted from the case law to reach the same outcome as the courts, yet, utilizing logic and language that the Office hopes to have the examining corps apply.  And, while the analysis is generally in line with that offered by the USPTO in its preliminary and interim notices (see links above), the examples provided in the update more often equate abstract ideas with mental processes than had the Office’s prior versions of the guidelines—a change which likely more reflects evolution of the case law than shifts in USPTO policy.

In addition to sample claims analyses, the update identifies four broad categories of concepts that the courts have labeled as abstract ideas:

A. “Fundamental economic practices”The phrase “fundamental economic practices” is used to describe concepts relating to the economy and commerce, such as agreements between people in the form of contracts, legal obligations, and business relations. The term “fundamental” is used in the sense of being foundational or basic, and not in the sense of necessarily being “old” or “well-known.”

B. “Certain Methods of Organizing Human Activity”The phrase “certain methods of organizing human activity” is used to describe concepts relating to interpersonal and intrapersonal activities, such as managing relationships or transactions between people, social activities, and human behavior; satisfying or avoiding a legal obligation; advertising, marketing, and sales activities or behaviors; and managing human mental activity. The [Guidelines] use[s] the term “certain” to qualify this category description, in order to remind examiners that (1) not all methods of organizing human activity are abstract ideas, and (2) this category description is not meant to cover human operation of machines. Like the other categories, some methods of organizing human activities can also be economic practices or “ideas.” For example, the concept of hedging claimed in Bilski was described by the Supreme Court as both a method of organizing human activity and a fundamental economic practice….

C. “An Idea ‘Of Itself’”The phrase “an idea ‘of itself,’” is used to describe an idea standing alone such as an uninstantiated concept, plan or scheme, as well as a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper.” Some concepts that are “ideas” can also fall within other categories. For example, in Ultramercial, the steps of displaying an advertisement in exchange for access to copyrighted media was called an “idea,” but could also be considered organizing human activity because the claim describes advertising….

D. “Mathematical relationships/formulas”The phrase “mathematical relationships/formulas” is used to describe mathematical concepts such as mathematical algorithms, mathematical relationships, mathematical formulas, and calculations…. It is also noted that the courts have described some mathematical concepts as laws of nature….

July 2015 Update, at pp. 4-5.

With release of the 2015 update, the USPTO has issued three publications on subject matter eligibility in the short span of one year since the Alice decision.  Those who had hoped that the Office would get ahead of the law and take at least a role in its definition will be disappointed.  It appears that the body of case law is growing so rapidly, that the USPTO is doing all it can simply to keep the examining corps informed for purposes of judging the patent-eligibility of newly filed applications.  It is worth noting, however, that to the extent practitioners and others are disappointed in the most recent guidance, comments related to the same may be submitted to the USPTO through October 28, 2015 by e-mailing 2014_interim_guidance@uspto.gov. These comments may impact any further guidance or final rules issued by the USPTO.