United States: New Year, New Section 101 Guidance: Welcome 2019!

Even during a partial government shutdown, the USPTO provided us with a gift for the New Year! What is that you ask? It is the 2019 Revised Subject Matter Eligibility Guidance ("2019 Guidance"), of course. Teasing us with a potpourri of discussion points on the revised guidelines for Section 101 during his speech in mid-September at IPO's Annual Meeting, Director Iancu waited until the New Year for the unveiling. Now, we'll tell you what was unveiled.

In a nutshell, the USPTO revised its examination procedure with respect to the first step of the Alice/Mayo test (i.e., Step 2A of the USPTO's Subject Matter Eligibility Guidance) by: "(1) providing groupings of subject matter that is considered an abstract idea; and (2) clarifying that a claim is not 'directed to' a judicial exception if the judicial exception is integrated into a practical application of that exception" (emphasis added).

I. Reasons for the Guidance

The 2019 Guidance Notes that:

Since the Alice case, courts have been "compar[ing] claims at issue to those claims already found to be directed to an abstract idea in previous cases. . . . .

While that approach was effective soon after Alice was decided, it has since become impractical. . . . . The growing body of precedent has become increasingly more difficult for examiners to apply in a predictable manner, and concerns have been raised that different examiners within and between technology centers may reach inconsistent results. . . . . In accordance with judicial precedent and in an effort to improve consistency and predictability, the 2019 . . . Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to [clarify the 101 analysis].

2019 Guidance at 8-9.

The 2019 Guidance is intended to enable USPTO examiners "to more readily determine whether a claim recites subject matter that is an abstract idea." To accomplish this laudable goal, the 2019 Guidance changes how Examiners will apply the first step of the Alice/Mayo test (referred to as "revised Step 2A"), which is now a two-prong inquiry.

II. PRONG ONE: Groups of Abstract Ideas

In Prong One, Examiners are instructed to evaluate whether the claim recites a judicial exception, i.e., a law of nature, a natural phenomenon, or an abstract idea. Under this Prong, the 2019 Guidance further clarifies that the abstract idea exception includes the following groupings of subject matter, "when recited as such in a claim limitation(s) (that is, when recited on their own per se)" (emphasis added):

a) Mathematical Concepts: mathematical relationships, mathematical formulas or equations, mathematical calculations;

b) 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

c) Mental processes: concepts performed in the human mind (including an observation, evaluation, judgment, opinion).

2019 Guidance at 9-11.

Under revised Step 2A, if the claim does not recite a judicial exception (Prong One: NO), it is not directed to a judicial exception and is eligible. However, if a claim does recite a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea as defined above), the claim must still be analyzed under Prong Two to determine whether the recited judicial exception is integrated into a practical application of that exception.

III. PRONG TWO: Integration into a Practical Application

Under Prong Two, the Examiner must determine whether "the claim as a whole integrates the recited judicial exception into a practical application of the exception." 2019 Guidance at 13. According to the 2019 Guidance, "[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." Id. at 13-14. When the exception is integrated (Prong Two: YES), the claim is not "directed to" the judicial exception and is eligible. However, where the additional elements do not integrate the exception into a practical application, the claim is directed to the judicial exception. In that case, the claim still requires additional analysis under Step 2B to finally determine whether the claim is patent-eligible.

Under Step 2B, the Office is to examine the additional elements found in the claim individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). If the additional elements amount to significantly more, the claim is eligible and if not, the claim is ineligible, and the examiner should reject the claims for a lack of subject matter eligibility.

IV. Prognosis

While the 2019 Guidance is effective today, it is incomplete in that the Office will be issuing more detailed Examiner Training Materials (including exemplary analysis of eligible and ineligible claims under the two-prong inquiry) later this week. While the revised Step 2A appears easier for Examiners to apply, the devil will lie in those details. To that end, the Office is seeking public comments on the 2019 Guidance until March 8, 2019.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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