[This post was updated on Jan. 17, 2019]
On Jan. 4, the Patent Office released the long-awaited 2019 Revised Patent Subject Matter Eligibility Guidance, which governs the Office’s examination procedure for evaluation of patent subject matter eligibility under 35 U.S.C. § 101.
The new guidance distinctly changes the tone of § 101 discourse to one more in favor of eligibility than in years past. In the same way that the tone of prior Office guidance in the wake of Alice v. CLS Bank appeared to lean in favor of findings of ineligibility, despite a lack of concrete legal standards compelling this result, the more pro-patent feel of the new guidance will likely by itself lead to an uptick in allowance rates. Tone aside, however, beyond signaling an increase in the perceived permissibility of examiners finding patents eligible, there appears to be little additional substance in the new guidance that could be used to compel a skeptical examiner to find a given claimed invention to be patent-eligible.
The two primary contributions of the new guidance appear to be (1) a somewhat more precise and constrained articulation of the classes of abstract ideas that can be cited as part of the “directed to” inquiry of Step 2A, and (2) the introduction of a new “Prong Two” to Step 2A.
The new guidance defines three groupings of abstract ideas:
- “Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations”
- “Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)” and
- “Mental processes – concepts performed in the human mind” (with footnote 14 stating that computer implementations are also considered abstract unless not practically possible to perform in the mind) [emphasis ours].
The guidance further states that “[c]laims that do not recite matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas,” except in for “a rare circumstance” (in which case approval of the technology center director, and a provided justification of classification as an abstract idea, will be required).
Although this appears decidedly pro-eligibility, in practice these groupings are essentially equivalent to those articulated in prior guidance from the Office. For example, the July 2015 Update identified the four sub-types of “fundamental economic practices,” “an idea ‘of itself’,” “certain methods of organizing human activity,” and “mathematical relationships/formulas,” which are arguably subsumed by the three new groupings. Perhaps, however, the lack of explicit inclusion of the oft-cited “idea ‘of itself’” within the new groupings will make it somewhat more difficult for examiners to assert that an invention is directed to an abstract idea. More likely, though, examiners who would previously have cited an “idea ‘of itself’” will now simply cite a “mental process” instead.
The new guidance supplements the (formerly sole) inquiry of Step 2A—namely, whether the claimed invention is “directed to” an abstract idea— with an additional inquiry: If the claim does recite a judicial exception such as an abstract idea, is the judicial exception “integrated into a practical application”? Although, again, the addition of this new path to eligibility would appear distinctly positive for patent applicants in that it should be relatively simple to establish that a commercial invention is “integrated into a practical application,” examiners will likely remain unconvinced. The only provided definition for what it means to be “integrated into a practical application” is that “[a] claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception,” — this being somewhat ambiguous language reiterated from prior Office guidance. Likewise, the provided list of (non-exclusive) factors for evaluating whether the definition is met appear merely to reiterate factors expressed in prior guidance.
My expectation is that findings of eligibility will continue to become more frequent following the issuance of this new guidance, but that (if so) it will be due more to the signals given to examiners and their supervisors that allowances are no longer frowned-upon, and due less to any actual new substantive tools that the guidance provides to patent prosecutors.
UPDATE: The new examples that accompany the 2019 guidance (namely, examples 37 through 42) indicate that the Office intends for examiners to apply the articulated abstract ideas of Step 2A, Prong 1, relatively narrowly, and the “integrated into a practical application” of Step 2A, Prong 2 (such as “specific improvements” and “meaningful limitations”), relatively broadly. If examiners do indeed employ analyses similar to those set forth in the new examples, then the increase in findings of eligibility will be considerably greater than I had initially estimated based on the 2019 guidance alone.
All of this said, the new guidance is still open to comment, and thus subject to change. Those interested in expressing their comments to the Patent Office may do so via email at Eligibility2019@uspto.gov.
*The perspectives expressed in the Bilski Blog, as well as in various sources cited therein from time to time, are those of the respective authors and do not necessarily represent the views of Fenwick & West LLP or its clients.