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USPTO Releases Updated Patent Eligibility Guidance Aimed at Clarifying the Guidance Released Earlier this Year

Client Updates

On Thursday, October 17, 2019, the USPTO issued new guidance to examiners, clarifying the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), 84 Fed. Reg. 50, published earlier this year. The new guidance responds to public comments received by the USPTO, requesting clarification on the new eligibility procedures.

The updated guidance provides clarification to several aspects of the 2019 PEG, including what types of claims are directed to abstract ideas, how examiners should determine whether a judicial exception is integrated into a practical application, the evaluation procedure to be used by examiners in determining whether a claim recites a judicial exception, and the manner by which examiners should explain their rejections to applicants.

In particular, the updated guidance clarifies that patent claims that do not fall into one of the three categories of abstract ideas—mathematical concepts, certain methods of organizing human activity, and mental processes—should generally not be rejected as abstract. In the rare circumstance that an examiner determines that a claim limitation, which does not clearly fall within one of the three categories, should nevertheless be treated as an abstract idea, the guidance explains that the examiner is required to obtain the approval of the Technology Center Director. If this approval is obtained, the decision will be recorded in the ensuing Office Action, and the public will be notified of the decision through the USPTO website.

Regarding the three categories of abstract ideas, the guidance provides additional details and examples as to the types of claims falling within each category. For example, the guidance explains that a claim does not recite a mathematical concept merely because it is based on or involves a mathematical concept. Instead, it is claims that merely recite numerical formulas, equations, or mathematical calculations that are abstract. The guidance also emphasizes that not all methods of organizing human activity are abstract ideas. In particular, examiners are not to expand this category beyond the enumerated sub-groupings of “fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, and relationships or interactions between people.” Additionally, the guidance states that claims should not be considered as reciting a mental process when they do not contain limitations that can practically be performed in the human mind. For example, claims do not recite a mental process when the human mind is not equipped to perform the limitation, as in the case of a data encryption method or a method involving a manipulation of computer data structures.

The updated guidance also provides further detail regarding what it means for an abstract idea or other judicial exception to be “integrated into a practical application.” The guidance explains that additional limitations that “reflect an improvement in the functioning of a computer, or an improvement to another technology or technical field,” are sufficient to impose a meaningful limit on the judicial exception, such that the claim integrates the exception into a practical application. Here, the claim need only provide an improvement to “the relevant existing technology”; it need not provide an improvement over “well-understood, routine, conventional activity.” Furthermore, the guidance explains that the improvement need not be explicitly stated in the specification, provided that the specification describes the invention such that the improvement would be apparent to one of skill in the art. Similarly, a claim can integrate a judicial exception into a practical application if it applies or uses the judicial exception in a particular manner of treating or preventing a disease or medical condition. However, in such instances, the claim limitations must have more than a nominal relationship to the judicial exception.

In providing clarifying comments to the examination procedure, the guidance stresses that the burden is on the examiner to explain why a claim is ineligible. Specifically, the examiner is to provide such explanation “clearly and specifically, so that the applicant has sufficient notice and is able to effectively respond.” Not only should a rejection identify the judicial exception relied upon, it should do so by referring to what is recited in the claim and by explaining why the recited claim elements are considered to fall under the exception. Additionally, the rejection should provide a detailed analysis and explanation of why any additional claim elements are insufficient to integrate the judicial exception into a practical application. Notably, the guidance emphasizes that, whenever practicable, the examiner should indicate to an applicant how the application may overcome a subject matter eligibility rejection.

Finally, the updated guidance notes that in appealing a § 101 rejection to the Patent Trial and Appeal Board, an applicant may rely upon the 2019 PEG in support of arguments that the rejection was improper. However, it will be the § 101 rejection itself, rather than any alleged failure to comply with the 2019 PEG, that is reviewed by the Board.

Baker Botts will continue to monitor this important area of the law and will provide future reports as the law continues to develop.


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