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USPTO Issues Revised Guidance on 101 and New Guidance on 112

Client Updates

Today, the United States Patent and Trademark Office(“USPTO”) announced revised guidance for subject matter eligibility under 35 U.S.C. § 101 (“101 Guidance”) and new guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions (“112 Guidance”). The 101 Guidance and 112 Guidance will take effect on January 7, 2019. According to USPTO Director Andrei Iancu, the guidance seeks to “improve the clarity, consistency, and predictability of actions across the USPTO.”

The 101 Guidance revises the procedures for determining whether a claim is directed to a judicial exception under Step 2A of the USPTO’s Subject Matter Eligibility Guidance. First, the 101 Guidance clarifies the analysis of whether a claim is directed to an abstract idea. It identifiescertain groupings of subject matter that constitute abstract ideas: mathematical concepts (e.g., mathematical relationships, formulas, equations, or calculations), certain methods of organizing human activity (e.g., fundamental economic principals or practices, commercial or legal interactions, and managing interpersonal behavior or relationships or interactions), and mental processes (e.g., concepts performed in the human mind). 

Second, the 101 Guidance sets forth a two-prong inquiry for whether a claim is “directed to” a judicial exceptionunder Step 2A. The first prong of the inquiry is to determine whether a claim is directed to a judicial exception. If not, the claim is patent eligible subject matter. If so, however, the claim must be examined under the second prong. The second prong of the inquiry is to determine whether the claim recites additional elements that integrate the exception into a practical application of that exception. If so, the claim is patent eligible subject matter. If not, however, the claim must be examined under Step 2B.

The 112 Guidance addresses the use of functionallanguage to claim computer-implemented inventions. In particular, the 112 Guidance examines the application of means-plus-function principles under 35 U.S.C. § 112(f), definiteness under 35 U.S.C. § 112(b), and written description and enablement under 35 U.S.C. § 112(a) to computer-implemented inventions. Under § 112(f), an examiner should apply the applicable presumption and the 3-prong analysis to interpret a computer-implemented functional claim limitation, including to determine whether the claim sets forth sufficient structure for performing the recited function. Furthermore, the specification for a computer-implemented § 112(f) claim limitation must disclose an algorithm for performing the claimed specific computer function to satisfy § 112(b).

To determine the sufficiency of the disclosure under § 112(a), an examiner should inquire into the sufficiency of both the disclosed hardware and software. The specification must disclose both the computer and the algorithm that achieve the claimed function in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. As to enablement under § 112(a), everything necessary to practice the invention need not be disclosed for computer-implemented inventions because of the high level of skill and predictability in the art.

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