On July 30, 2015, the United States Patent and Trademark Office (USPTO) released a set of documents providing examiners and practitioners with additional guidance on patent subject matter eligibility. The July 2015 Update responds to comments received from the public following the USPTO’s issuance of the 2014 Interim Guidance (2014 IEG) on December 26, 2014.

The Update responds to “six themes” from the over sixty comments received by the USPTO on its previous Guidance on 35 U.S.C. § 101: (1) additional examples, particularly for abstract ideas and laws of nature; (2) further explanation on why the “markedly different characteristics” (MDC) analysis for “product of nature” claims will remain part of step 2A; (3) further information on how examiners identify abstract ideas; (4) discussion of the prima facie case and role of evidence in rejections; (5) information regarding application of the 2104 Interim Guidance by the examiners; and (6) explanation of the role of “preemption” in the analysis. Besides the Update and a “Quick Reference Sheet,” the USPTO provided three Appendices which include new examples of eligible/ineligible claims, a comprehensive index of the 27 case studies that appear in both the 2014 IEG and the present Guidance, and a table of relevant Supreme Court and Federal Circuit decisions.

In short, the USPTO indicated it will retain the current Steps 2A and 2B Alice/Mayo analysis outlined in the 2014 IEG, including the “streamlined analysis” available for claims that “clearly do not seek to tie up any judicial exception such that others cannot practice it.” Because the courts have declined to define “abstract ideas,” the USPTO instructs examiners to identify abstract ideas in Step 2A “by way of comparison to concepts already found to be abstract,” which the USPTO groups into four “types of concepts”: 1) “fundamental economic practices”; 2) “certain methods of organizing human activity”; 3) “an idea of itself”; and 4) “mathematical relationships/formulas.”

To further assist examiners and practitioners, the Update includes in Appendix 1 seven “new” detailed examples of the hypothetical examination process for claims in the business method, graphical user interface (GUI), and software areas. Four are modeled after (and reach the same conclusion as) existing court decisions but explain in detail how examiners should apply a similar subject eligibility analysis during examination. Three hypotheticals warrant closer scrutiny as they are truly “new.”

Example 23 contains four (two eligible/two ineligible) claims relating to GUIs. The two ineligible claims recite abstract ideas but not “significantly more.” Of particular interest here is the analysis of eligible claims 1 and 4, which are similar except for the three additional “calculating” and scaling steps in claim 4. Somewhat surprisingly, the guidance concludes, in Step 2A, that the broader claim 1 describes no abstract idea, and therefore the claim is eligible, needing no further analysis. Claim 4, despite reciting all of claim 1’s steps and being more detailed, is found to recite an abstract idea in Step 2A because of the presence of the calculating and scaling steps, even though those steps are performed by a computer processor. The USPTO concludes that claim 4 is ultimately eligible when all elements are taken as a whole and as an ordered combination, but needs more analysis than the broader claim 1.

In examples 26 and 27, the USPTO applies the streamlined patent eligibility analysis to claims comprising computer-implemented elements. Although the claim in example 26 recites a control system that “calculates a position” of a valve based on a “rate of change of the engine throttle position” and changes the position of the valve based on the calculated position, this claim to an internal combustion engine is found immediately eligible on the streamlined analysis. The USPTO acknowledges a “mathematical relationship” in one of the elements but finds the claim as a whole passes muster because it is “immediately evident” that the claim does not “tie up” the mathematical relationship so others cannot use it and further it “improves engine technology.”

In example 27, the USPTO provided a streamlined analysis of a claim to “a method for loading BIOS [Basic Input/Output System]  into a local computer system.” The USPTO opined that, although computers operate on mathematical theory, the eligibility of the three-element claim was “self-evident” because there is “no apparent exception” (such as “performing a mathematical relationship to obtain a result”) recited in the claim. 

From these new examples, including example 25 (the Diehr example), it appears any recitation of “calculating” prevents streamlined analysis and forces it into the “significantly more” analysis. Without explicitly recited “calculations,” a claim may be immediately eligible even if calculations take place behind the scenes.

As for Step B, the USPTO noted that, since courts had not required evidence to support a finding that additional elements were well-understood, routine or conventional, examiners can rely on their expertise and take judicial notice.

Finally, in response to concerns about applying the guidelines by examiners, the USPTO confirmed that the initial burden remains with the examiner, and the USPTO will continue to provide guidance and training to examiners with the goal of providing more predictable, consistent examination. While the current Update focuses more on computer-related claims, further guidance and examples involving claims directed to laws of nature and natural phenomena are forthcoming.

Public comments on the Update are solicited and due by October 28, 2015.

The full July 2015 Update is available here.