U.S. Patent and Trademark Office announces revised guidance for determining subject matter eligibility
The USPTO announced revised guidance for subject matter eligibility under 35 U.S.C. § 101. The USPTO also announced guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions.
The “2019 Revised Patent Subject Matter Eligibility Guidance” makes two primary changes applying the first step of the Alice/Mayo test, judicial exception.
First, the revised guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes certain groupings of subject matter: mathematical concepts, certain methods of organizing human activity, and mental processes.
Second, the guidance provides a two-prong inquiry for whether a claim is “directed to” a judicial exception. In the first prong, examiners will evaluate whether the claim recites a judicial exception and if so, proceed to the second prong. In the second prong, examiners evaluate whether the claim recites additional elements that integrate the identified judicial exception into a practical application. If a claim both recites a judicial exception and fails to integrate that exception into a practical application, then the claim is “directed to” a judicial exception. In such a case, further analysis pursuant to the second step of the Alice/Mayo test is required.
The “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112” guidance emphasizes various issues with regard to § 112 analysis, specifically as it relates to computer-implemented inventions. The guidance describes proper application of means-plus-function principles under § 112(f), definiteness under § 112(b), and written description and enablement under § 112(a).