2014 Interim Guidance on Patent Subject Matter Eligibility

On December 15, 2014, the U.S. Patent & Trademark Office (USPTO) released examination guidelines titled 2014 Interim Guidance on Patent Subject Matter Eligibility (the interim guidelines). The USPTO issued the guidelines in view of the recent Supreme Court decisions, Association for Molecular Pathology v. Myriad Genetics, Inc. (IP Update, Vol. 16, No. 6), Mayo Collaborative Services v. Prometheus Laboratories, Inc. (IP Update, Vol. 15, No. 3) and Alice Corp. Pty. v. CLS Bank International, et al. (IP Update, Vol. 17, No. 7). The interim guidelines supplement the June 25, 2014 Preliminary Examination Instructions and supersedes the March 4, 2014 Subject Matter Guidelines. The USPTO is seeking written comments on interim guidelines. The period for submitting comments expires March 16, 2015.

The USPTO summarized the guidelines in a two-step flowchart (see here). The first step is the same as the prior guidelines: determine whether the claim is directed to one of the four statutory categories, i.e., a process, machine, manufacture or composition. The second-step is a two-part analysis for claims directed to laws of nature, natural phenomena and abstract ideas (the judicially recognized exceptions).

In Step 2A, the examiner determines whether the claim is directed to any of the judicially recognized exceptions. 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.

In Step 2B, the examiner determines whether any element, or combination of elements, in the claim is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception. If not, the claim is ineligible and should be rejected under 35 U.S.C. § 101. If yes, the claim is eligible.

The additional elements should be considered both individually and in combination. Individual elements, on their own may not add significantly more, but when taken in combination may amount to significantly more than the exception. Each claim should be separately considered based on the particular elements recited therein. If a claim is directed to a plurality of judicially recognized exception and fails the eligibility under at least one exception, the claim is ineligible, and no further eligibility analysis is needed.

The interim guidelines listed six non-exclusive types of limitations that may qualify as “significantly more” when recited in a claim with one of the judicial exceptions and four non-exclusive types of limitations that were not sufficient to qualify as “significantly more.”

The six types of limitations that may qualify as “significantly more” include:

1. improvements to another technology or technical field; 

2. improvements to the functioning of the computer itself;

3. applying the judicial exception with, or by the use of, a particular machine;

4. effecting a transformation or reduction of a particular article to a different state or thing;

5. adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application;

6. other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.

The four types of limitations that were found not to qualify as “significantly more” include:

1. adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer;

2. simply appending well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known in the industry;

3. adding insignificant extra solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea; or

4. generally linking the use of the “apply it” judicial exception to a particular technological environment or field of use.