On Jan. 4, 2019, the USPTO announced revised guidance relevant to Section 101 rejections (“2019 Revised Patent Subject Matter Eligibility Guidance”). The 2019 Revised Patent Subject Matter Eligibility Guidance explains that a claim that recites a judicial exception is not “directed to” the judicial exception if the judicial exception is “integrated into a practical application” of the judicial exception. The procedure, referred to as “revised Step 2A,” changes how examiners should apply Step 2A of the Alice/Mayo test, which asks whether the claim in question is “directed to” a judicial exception. This article considers the effect of the new integrated into a practical application test and offers practical tips for applicants.

Step 2A, Prong 2: The ‘integrated into a practical application’ test

Step 2A of the 2019 Revised Patent Subject Matter Eligibility Guidance is a two-prong inquiry. In Prong One, examiners evaluate whether the claim recites a judicial exception (i.e., an abstract idea, a law of nature or a phenomenon). This prong is similar to procedures in prior guidance except that when determining whether a claim recites an abstract idea, examiners now refer to the subject matter groupings of abstract ideas in Section I instead of comparing the claimed concept with the USPTO’s prior “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”

If the claim recites a judicial exception, the claim requires further analysis in Prong Two. In Prong Two, examiners evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception. This prong adds a more detailed eligibility analysis to step one of the Alice/Mayo test (USPTO Step 2A) than was required under prior guidance. If the recited exception is integrated into a practical application of the exception, then the claim is eligible at Prong Two of revised Step 2A, and this concludes the eligibility analysis. In other words, if for example an abstract idea is integrated into a practical application of that abstract idea, the claim passes muster under Section 101.

But what is meant by the expression “integrated into a practical application”? Would it suffice if the applicant could show that the claimed invention had practical utility? For example, for a software invention rejected as being an abstract idea, would it be enough to show that the claimed invention solves a problem in the prior art, or offers some benefit to users? If this is how the test will work in practice, then I see this as a big improvement over prior USPTO guidance, since it should significantly reduce the burden for patent applicants. Under prior guidance, applicants often have to show that the claimed invention provided a solution to a technological problem under Step 2A. This can be difficult in many cases since the problem being solved might not be viewed by the USPTO as “technological” in nature but rather as a business or financial problem. It should be easier, in my view, to show that an inventive solution has a “practical application” by virtue of solving a technological, business or financial problem, as distinguished from requiring that the invention solve a technological problem. If this is in fact the case, then the new guidance represents a positive development for patent applicants.

According to the 2019 Revised Patent Subject Matter Eligibility Guidance, a claim that integrates a judicial exception into a practical application will apply, rely on or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Examiners evaluate integration into a practical application by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s), and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit, for example those listed below. In prior guidance, some of these considerations were discussed in the context of Step 2B. Evaluating them in revised Step 2A, as in the new guidance, is intended to promote early and efficient resolution of patent eligibility.

Moreover, and importantly, the revised Step 2A specifically excludes consideration of whether the additional elements represent well-understood, routine, conventional (WURC) activity. Under the new guidance, WURC activity is examined in Step 2B, but only if the claim fails to satisfy Step 2A. Accordingly, in revised Step 2A examiners should give weight to all additional elements, whether or not they are well-known or conventional, when evaluating whether a judicial exception has been integrated into a practical application. Thus, old and conventional elements are given weight in determining whether the claim in question recites a practical application of a judicial exception.

In the context of revised Step 2A, the following exemplary considerations are indicative that an additional element (or combination of elements)[1] may have integrated the exception into a practical application:

  • An additional element reflects an improvement in the functioning of a computer or other technology.
  • An additional element applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition.
  • An additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim.
  • An additional element effects a transformation or reduction of a particular article to a different state or thing.
  • An additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.

This is not an exclusive list, and there might be other examples of integrating the exception into a practical application.

Conclusion

Applicants and their representatives should read the new 101 guidance and work with examiners to ensure that the claims are being considered for patent eligibility under the rules, as this should significantly reduce applicants’ burdens. In addition, new applications should be written with an eye toward the new “integrated into a practical application” test.