In late January 2018, the U.S. Patent and Trademark Office published a revision to the Manual of Patent Examining Procedure that includes substantial guidance on patent subject matter eligibility under 35 U.S.C. § 101. While the MPEP has no authority of law in itself, it is the primary resource that instructs patent examiners in all aspects of examination. The update to the MPEP does not purport to change the examination practice set forth in a series of earlier memoranda issued by the USPTO in the years following the 2014 decision in Alice v. CLS Bank. However, the recent revision does consolidate and organize the guidance from these memoranda in a single resource, one that provides new clues as to how examiners will approach the subject matter eligibility question going forward.
Notably for software companies, the revised MPEP expressly recites that “software and business methods are not excluded categories of subject matter,” providing a direct statement rebutting any misconception that such subject matter categories are universally ineligible following Alice. See MPEP 2106.04(a) (emphasis added). Such categories of invention will continue to face elevated scrutiny and will require practitioners to carefully craft claims that meet the eligibility threshold. However, the framework in the revised MPEP sets forth clear paths to eligibility, signaling that applicants may see increased consistency and predictability from the USPTO in finding eligible subject matter.
The revised MPEP organizes the eligibility determination into three possible pathways to eligibility. Under “Pathway A,” examiners may apply a “streamlined analysis” when the claims fall within a statutory category (processes, machines, manufactures and compositions of matter) and when “eligibility is self-evident” (MPEP 2106.III). The streamlined analysis gives an examiner discretion to bypass a more rigorous approach when the claim “clearly improves a technology or computer functionality” (MPEP 2106.06). Claims drafted specifically to highlight such technological improvements should therefore be at an immediate advantage.
Under “Pathway B,” examiners may conclude that a claim is patent eligible if the claim falls within a statutory category and is “not directed to a judicial exception” (MPEP 2106.III). Here, the revised MPEP notes that while not the standalone test, “preemption is the concern underlying the judicial exceptions” (MPEP 2106.04). Thus, drafting claims that are sufficiently specific to not preempt a particular technical field may be critical to a favorable outcome.
Under “Pathway C,” examiners may conclude that a claim is patent eligible if the claim falls within a statutory category and recites elements “that amount to significantly more than the judicial exception.” The revised MPEP characterizes this analysis as essentially a “search for an inventive concept” (MPEP 2106.05). Here, the revised MPEP provides numerous examples contrasting patent-eligible claims directed to technological improvements, particular machines, and particular transformations with patent-ineligible claims that are merely directed to “well-understood, routine, conventional activity.” Applicants may find it useful to draw analogies to the favorable examples in this section when arguing a rejection.
The revised MPEP will become the definitive guide for addressing subject matter eligibility during examination. Examiners will likely give deference to arguments consistent with its framework, so practitioners should become familiar with its teachings and use it to their advantage when approaching subject matter eligibility rejections.