July 2015 Update on Subject Matter Eligibility
On July 30, 2015, the U.S. Patent and Trademark Office (USPTO) released an update to the 2014 Interim Guidance on Patent Subject Matter Eligibility (the interim guidelines) (See IP Update, Vol. 17, No. 12.) The update is aptly titled July 2015 Update on Subject Matter Eligibility and was released in response to over 60 comments submitted in response to the interim guidelines. The USPTO noted the comments submitted fell into several major themes including requests for additional examples, further explanation of the “markedly different characteristics” analysis from the 2014 Interim Guidelines, further information regarding how examiners identify an abstract idea, a discussion of the prima facie case (from the interim guidelines) and an explanation of the role of preemption in the patent eligibility analysis.
The update provides seven additional examples, illustrative of court holdings on subject-matter eligibility, are included in the update.
Markedly Different Characteristics
The update explains that inclusion of the “markedly different characteristics” analysis in Step 2A of the 2014 Interim Guideline analysis was intended to provide an additional pathway to subject matter eligibility for many claims directed to “product of nature” exceptions.
The update notes that courts have not expressly defined “abstract ideas” and that examiners should therefore refer to examples in court decisions where abstract ideas were identified. An examiner should not find a concept to be abstract unless it is similar to at least one concept that a court has identified as an abstract idea. The update also included a graphic summarizing concepts held to be abstract ideas in Supreme Court and U.S. Court of Appeals for the Federal Circuit decisions under the following four categories: Fundamental Economic Practices, An Idea of Itself, Certain Methods of Organizing Human Activity, and Mathematical Relationships/Formulas.
Prima Facie Case
The update explains that to make a prima facie case of non-eligibility, an examiner must clearly articulate the reasons why the claimed subject matter is not eligible, for example by providing a reasoned rationale that identifies the judicial exception recited in the claim and why it is an exception, and should identify the additional elements in the claim, if any, and provide an explanation as to why those elements do not amount to significantly more than the stated exception.
The update explains that preemption is not a stand-alone test for eligibility. While a preemptive claim may be ineligible, a claim that lacks preemption is not necessarily eligible.
In an appendix to the update, the USPTO provides an index of 27 examples for determining eligibility. The appendix provides information such as the subject matter, statutory category, judicial exception (if any) and relevant considerations for each example.
The USPTO is seeking written comments on the update. The comment period expires on October 28, 2015.