On January 27, 2015, the U.S. Patent & Trademark Office (USPTO) released examples to supplement the 2014 Interim Guidance on Patent Subject Matter Eligibility (the interim guidelines), which were released in December 2014.  The USPTO cautioned that the examples were intended to be illustrative only, and that other fact patterns may have different eligibility outcomes.

The examples used the two-step analysis disclosed in the interim guidelines.  Step 1 determines whether the claim is directed to one of the four statutory categories, i.e., a process, machine, manufacture, or composition.  Step 2 is a two-part analysis.  In Step 2A, the examiner determines whether the claim is directed to any of the judicially recognized exceptions (laws of nature, natural phenomena and abstract ideas).  If no, the claim is eligible and examination should continue for patentability.  If yes, the examiner proceeds to Step 2B to analyze whether the claim as a whole amounts to “significantly more” than the exception.  If no, the claim is ineligible, and should be rejected under 35 U.S.C. § 101.  If yes, the claim is eligible.

The examples are arranged into two parts. The first part includes four fact patterns with claims that are patent-eligible, several of which draw from decisions by the U.S. Court of Appeals for the Federal Circuit, and the second part includes four fact patterns with claims that were found ineligible by the Federal Circuit.  Each of the examples shows how claims should be analyzed under the 2014 Interim Eligibility Guidance.  All of the claims were analyzed for eligibility in accordance with their broadest reasonable interpretation.

In the first part, the first example is a hypothetical claim and fact pattern that illustrates an eligible software invention that is not directed to an abstract idea. The second example is a recent Federal Circuit decision.  The third and fourth examples are based on Federal Circuit decisions where claims were found to be eligible, but were drafted as hypothetical claims modified to prominently add an abstract idea for teaching purposes to facilitate analysis under the “significantly more” prong of the 2014 Interim Eligibility Guidance.

In the second part, the four examples show claims that were held ineligible by the Federal Circuit. The analysis sections are based on the court decisions but include exemplary hypothetical analyses under the interim guidelines.

Determining whether a claim satisfies Step 1 and Step 2A are relatively straightforward.  Step 2B, which involves a determination of whether the claim as a whole adds significantly more to the abstract idea, is fact intensive, and promises to be highly disputed, at least until the USPTO releases the final examination guidelines.

The USPTO is seeking written comments on the interim guidelines.  The period for submitting comments expires March 16, 2015.