On July 30, 2015, the United States Patent and Trademark Office (USPTO) published a midyear update to the 2014 Interim Guidance on Subject Matter Eligibility (IEG). While, the IEG sheds a little more light on the topic, the IEG still leaves many unanswered questions regarding patent eligibility under 35 USC § 101.

The update incrementally supplements the IEG, is responsive to over 60 public comments received by the USPTO, and is based on the latest developments in patent eligible subject matter jurisprudence from the Court of Appeals for the Federal Circuit (CAFC). The update includes five parts, including a "major themes" document and a Quick Reference Sheet.

The USPTO elaborates on six major themes identified in the public comments, namely "(1) requests for additional examples, particularly for claims directed to abstract ideas and laws of nature; (2) further explanation of the markedly different characteristics (MDC) analysis; (3) further information regarding how examiners identify abstract ideas; (4) discussion of the prima facie case and the role of evidence with respect to eligibility rejections; (5) information regarding application of the 2014 IEG in the corps; and (6) explanation of the role of preemption in the eligibility analysis, including a discussion of the streamlined analysis." In short, the major themes document addresses all six themes individually in order to explain the various pathways to eligibility. For example, responsive to the requests for additional examples, the USPTO suggests that examiners and the general public review Appendix 1, which provides examples and explanations of both patent eligible and ineligible subject matter.

There are three major takeaways from this update.  First, the USPTO has stated that it has listened to the themes raised in the feedback and responded accordingly (we can only assume that the USPTO accurately identified the feedback themes in the public comments).  Based on the issues raised in articles and by public comment, it appears that the outlined themes generally represent the major concerns with the current state of examination under Section 101.

Second, if properly implemented, the USPTO guidance gives the examiners a better framework for providing detailed reasoning and insight as to the basis for Section 101 rejections, which is sorely lacking under the current procedures.  The USPTO explained that the initial burden is on the examiner to explain why a claim or claims are unpatentable clearly and specifically, so that applicant has sufficient notice and is able to effectively respond. For subject matter eligibility, the examiner’s burden is met by clearly articulating the reason(s) why the claimed invention is not eligible, for example by providing a reasoned rationale that identifies the judicial exception recited in the claim and why it is considered an exception, and that identifies the additional elements in the claim (if any) and explains why they do not amount to significantly more than the exception. This rationale may rely, where appropriate, on the knowledge generally available to those in the art, on the case law precedent, on applicant’s own disclosure, or on evidence. Notably, evidence is not a prerequisite to a patent eligibility rejection; rather a clear articulation of reasons for a patent eligibility rejection is sufficient.

Third, based on the guidance, a properly-trained examiner no longer should stray from the appropriate eligibility analysis and instead should "ensure that a claimed concept is not identified as an abstract idea unless the claimed concept is similar to at least one concept that the courts have identified as an abstract idea." This should also provide some clear direction for applicants to predict what is likely to be considered ineligible by the examining corps. As the major themes document goes into great detail explaining what the courts have previously identified as abstract ideas, an applicant has some guidance as to how to avoid the issues that plagued the claims in the articulated precedent. Notably, Appendix 2, Appendix 3, and the Quick Reference Sheet are helpful in summarizing these cases, while assisting a reader in understanding the substantive discussion. However, there is some concern that the examiners may not fully consider the underlying cases and may instead rely on merely characterizing a claim to analogize it to one of the over-simplified ineligibility categories identified in the Quick Reference Sheet.

The guidance offers two noteworthy statements.  First, while preemption is not a standalone test, it is useful in eligibility analysis. The USPTO stated "while a preemptive claim may be ineligible, the absence of complete preemption does not guarantee that a claim is eligible." Although the Supreme Court precedent may have focused on invalidating claims that would “tie up” an entire industry, USPTO examination does not appear to give enough weight to preemption in the eligibility analysis. So the USPTO emphasized that a streamlined analysis is retained in this guidance.

Second, the USPTO stated that this discussion regarding identifying abstract ideas "is meant to guide examiners and ensure that a claimed concept is not identified as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea."  Presumably, an examiner would find claims eligible that do not clearly match the abstract concepts identified by the courts.  Unfortunately, the vague language used by the USPTO may allow the examiners to suggest that the claimed invention only needs to be “similar to” one of the categories to uphold an ineligibility rejection.

Despite the USPTO's grand intentions, the IEG offer little solace to those applicants concerned with overcoming Section 101 rejections. For those applicants who have such considerations, there is an opportunity to publicly comment on the IEG.