January, 8th, 2019

The U.S. Patent and Trademark Office has prepared 2019 Revised Patent Subject Matter Eligibility Guidance for use by Examiners in evaluating whether an application is directed to patent-eligible subject matter.  While all processes, machines, manufactures, and compositions of matter are statutorily eligible for patenting, the Courts have carved out judicial exceptions for abstract ideas, laws of nature, and natural phenomena.

In recent years, Supreme Court decisions have led to inconsistency in the application of the subject matter eligibility analysis at the USPTO, particularly with respect to abstract ideas. As a result, applicants and practitioners have noticed shifting standards and ill-defined tests for what constitutes eligible subject matter.

The new guidelines seek to establish a consistent and reliable framework for the subject matter eligibility analysis.  To do so, the new guidelines limit and more narrowly define three categories of abstract ideas: mathematical concepts, methods of organizing human activity, and mental processes.  A claim is automatically patent eligible if it does not fall in one of these restricted categories. Even if a claim is directed towards an abstract idea, the new guidelines require that Examiners find that any practical application of the abstract idea will render it patent eligible, including an improvement to a technical field.

The 2019 Revised Patent Subject Matter Eligibility Guidance is effective as of January 7, 2019 and applies to all applications. The USPTO is seeking public comment on this guidance and may issue or modify its guidance based on public comments received.

The new guidelines create a positive step forward for consistency in Examiners’ rejections and allowances regarding subject matter eligibility. WHIPgroup anticipates further success in getting patents allowed under this framework.

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