IP Law Advisory

August 5, 2015

Patent Office Supplements Subject Matter Eligibility Guidelines
By Gregory Gerstenzang, Esq.

On July 30, 2015, the U.S. Patent and Trademark Office (USPTO) issued a new set of guidelines on subject matter eligibility. These guidelines supplement the June 25, 2014 preliminary examination instructions that were issued following the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank. The guidelines are intended to help patent examiners determine whether a claim covers subject matter that is eligible for patent protection. The Patent Act allows for patent protection of a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. §101. However, courts have created exceptions to these general categories. Patents cannot cover ineligible subject matter, such as abstract ideas, naturally occurring substances, or laws of nature.

The USPTO’s supplemental guidelines include additional examples of claims reciting subject matter that should be eligible for patentability under 35 U.S.C. §101, as well as unpatentable subject matter. The examples include claims analyzed in decisions of the Court of Appeals for the Federal Circuit (CAFC) as well as some hypothetical claims. The additional examples are predominantly related to claims for computer-based or software-based inventions. For example, the guidelines compare and contrast hypothetical software claims, graphical user interfaces, and claims directed to remote access and storage of computer control software. For each example, the supplementary guidelines provides sample analyses of why the claim should or should not be eligible for patentability, utilizing the two-part analysis set forth in the Alice v. CLS decision. These analyses apply the Supreme Court and CAFC’s considerations for determining whether a claim that appears directed to one of the judicial exceptions for subject matter eligibility includes “substantially more” than the judicial exception itself and is thus eligible for patentability. The USPTO indicated that additional examples directed to claims in the biotechnology area are being developed.

With regard to abstract ideas, the supplemental guidelines provide additional guidance on identifying abstract ideas to which a claim may be directed. Examiners are instructed to only reject a claim as abstract if the idea is one that “is similar to at least one concept that the courts have identified as an abstract idea” and that “stays within the confines of the judicial precedent.” Abstract ideas include “fundamental economic practices, “certain methods of organizing human activity,” an “idea of itself,” and “mathematical relationships/formulas.” The guidelines instruct examiners that “judicial exceptions need not be old or long-prevalent, and that even newly discovered judicial exceptions are still exceptions” to patentable subject matter.

As acknowledged in the supplemental guidelines, “[t]he Supreme Court has described the concern driving the judicial exceptions as preemption.” Examiners are instructed, however, that “while a preemptive claim may be ineligible, the absence of complete preemption does not guarantee that a claim is eligible.” In addition, the supplemental guidelines explain that no separate preemption analysis beyond the two-part analysis set forth in the Alice v. CLS decision is required.

The supplemental guidelines explain what is required for an examiner to establish a prima facie case of lack of subject matter eligibility. Examiners are not required to support a subject matter eligibility rejection with evidence. The guidelines state that “[f]or subject matter eligibility, the examiner’s burden is met by clearly articulating the reason(s) why the claimed invention is not eligible.” The justification for this approach is that “courts do not rely on evidence that a claimed concept is a judicial exception, and in most cases resolve the ultimate legal conclusion on eligibility without making any factual findings.” The USPTO, however, is not a court of law. It is an administrative agency that must act in accordance with the Administrative Procedures Act, which holds that agency decisions must be supported by “substantial evidence.” It shall be seen if this portion of the supplemental guidelines survives judicial review.

The supplemental guidelines attempt to provide additional clarity for what types of claims should be rejected for lack of subject matter eligibility. In particular, the examples will help examiners and applicants frame their arguments regarding why a claim should or should not be rejected based on subject matter eligibility. Unfortunately, there is still limited guidance on what constitutes patentable subject matter, especially in the software field.

The foregoing has been prepared for the general information of clients and friends of the firm. It is not meant to provide legal advice with respect to any specific matter and should not be acted upon without professional counsel. This material may be considered advertising under certain rules of professional conduct.