On December 15, 2014, the United States Patent & Trademark Office (USPTO) released updated guidelines for patent examiners to evaluate the subject-matter eligibility of claims. The overall process outlined by the updated guidelines follows the requirements set forth by the Supreme Court in its recent Myriad ruling. Additionally, the updated guidelines significantly relax the restrictions the USPTO initially published in March 2014 in order to adhere to recent Supreme Court decisions that define subject matter eligibility for judicial exceptions.
In the updated guidelines, the USPTO places greater emphasis on the classification of judicial exceptions (e.g., abstract ideas, laws of nature, and natural phenomenon). The object of the updated guidelines is to ensure that the USPTO does not reject claims that “when viewed as a whole, clearly [do] not seek to tie up any judicial exceptions such that others cannot practice it.”
The updated guidelines provide a new evaluation process that requires an examiner, after determining that a claim is for a statutory category (i.e., process, machine, manufacture, or composition of matter), to then determine whether the claim is “directed to” a judicial exception (Mayo Test, Part 1). If not, the claim’s subject matter is deemed eligible. Otherwise, if directed to a judicial exception, then the updated guidelines direct the examiner to determine whether the claim recites additional subject matter that “amount[s] to significantly more” than the earlier-determined judicial exception (Mayo Test, Part 2). If so, the claim’s subject matter is deemed eligible. Otherwise, the claim is rejected under 35 U.S.C. § 101.
The Mayo Test, Part 1
When discussing the process for the first part of the Mayo test, the updated guidelines give a detailed analysis of when a claim is “directed to” a judicial exception and also give guidance for examiners to determine when a nature-based product possesses “markedly-different characteristics” from its naturally-occurring equivalent. The updated guidelines stipulate that a claim is “directed to” a judicial exception when “a law of nature, a natural phenomenon, or an abstract idea is recited (i.e., set forth or described) in the claim.” The updated guidelines also provide examples of recited judicial exceptions as set forth in various Supreme Court and Federal Circuit rulings that specifically discussed patent-eligible subject matter (see the following tables).
Examples of Natural Phenomenon and Laws of Nature:
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Examples of Abstract Ideas:
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The Mayo Test, Part 2
In the second part of the Mayo Test, when an examiner finds that the claim recites subject matter that is deemed a judicial exception, the updated guidelines direct the examiner to determine whether additional elements in the claim are sufficient to ensure the claim “amounts to significantly more than the judicial exception.” The examiner is to evaluate the claim elements both individually and in combination with other elements. Similar to the “inventive concept” used by other patent offices, the examiner is to determine whether the claim elements ensure that the claim as a whole amounts to significantly more than the judicial exception.
In practice, this means that the claim should include additional features that limit the judicial exception in a meaningful way to avoid monopolizing the judicial exception. In other words, the second part of the Mayo Test is intended to prevent others from preempting all uses of an abstract idea, law of nature, or use of a naturally occurring compound. Instead of providing a definitive rule for how to overcome a preemption issue in the context of a judicial exception, however, the updated guidelines discuss examples of cases where claims recited “significantly more” than the recited judicial exception, in contrast to cases where claims failed to meet the requirement (for example, see the following lists).
Limitations That May be Enough to Qualify as “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;
- Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
Limitations That Were Not Found to be Enough to Qualify as “Significantly More”:
- Adding 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 ideas.
- Generally linking the use of the judicial exception to a particular technological environment or field of use.
The updated guidelines also state that examiners may employ a “streamlined” eligibility analysis for a claim that, when viewed as a whole, clearly does not seek to tie up any judicial exception such that others cannot practice it. The updated guidelines give the following examples of such claims:
- A robotic arm assembly having a control system that operates using certain mathematical relationships is clearly not an attempt to tie up use of the mathematical relationships.
- A claim that recites a nature-based product, but clearly does not attempt to tie up the nature-based product, does not require a markedly-different characteristics analysis to identify a “product of nature” exception. Examples of this include:
- An artificial hip prothesis coated with a naturally-occurring mineral.
- A cellphone with an electrical contact made of gold.
- A plastic chair with a wood trim.
The updated guidelines analyze a wide array of historical Supreme Court decisions and recent Federal Circuit decisions that directly address subject-matter eligibility, illustrating how the evaluation process outlined in the updated guidelines impacts the patent examiner analysis for determining whether claimed subject matter is patent eligible.
Unfortunately, the updated guidelines do not provide a concrete evaluation process for a number of issues used in the subject-matter eligibility analysis of computer-related inventions. For example, the updated guidelines do not provide specific examples of how an examiner is to determine whether a computer-related or Internet-related claim feature adds “significantly more” to a claim otherwise deemed to fall within a judicial exception, such as an abstract idea related to a business method. In other words, the updated guidelines do not provide specific analysis steps for determining whether or not the additional computer-related or Internet-related claim features of such a claim would or would not be deemed to be significant, insignificant, peripheral, or merely contextual to the business idea itself.
In summary, in the updated guidelines, the USPTO provides practitioners and examiners with a more concrete framework for evaluating many subject matter eligibility issues in view of the Supreme Court’s and Federal Circuit’s recent rulings on what constitutes patent-eligible subject matter. As additional Federal Circuit and Supreme Court cases continue to define the contours of subject matter eligibility under section 101, the USPTO may further update these guidelines to reflect such changes.