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USPTO Update on Subject Matter Eligibility

The July 2015 update does not cancel the 2014 IEG.  The 2014 IEG was provided for use by USPTO personnel in determining subject matter eligibility in view of then recent decisions by the U.S. Supreme Court including Alice Corp., Myriad, and Mayo and comments regarding the 2014 IEG were solicited from the public.  In response to the public comments, this update has been provided which includes new examples and discussion of various issues raised by the public.   The aim of the update is to provide further guidance for examiners in determining what is and is not considered to be eligible subject matter by applying the two step Alice/Mayo eligibility test set out in the 2014 IEG.

A flowchart setting out the two step Alice/Mayo eligibility test can be found here.

The July 2015 update includes three appendices which provide: new examples (Appendix 1); a comprehensive index of examples for use with the 2014 IEG including new and previously issued examples (Appendix 2); and a list of selected eligibility cases from the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit (Appendix 3).   These appendices should help both examiners and applicants in getting to grips with determining subject matter eligibility.

The additional examples provided in Appendix 1 include claims directed to abstract ideas, particularly in the business method, graphical user interface, and software areas.   Examples in the biotechnology area are not provided as they are currently being prepared in light of recent judicial developments, such as Ariosa Diagnostics v. Sequenom.  Consequently, we anticipate that a further update may follow.

The examples provide sample analyses applying the Supreme Court and Federal Circuit’s considerations for determining whether a claim with additional elements amounts to significantly more than the judicial exception itself.

The update also provides additional guidance on identifying abstract ideas, in order to assist examiners in clearly articulating grounds of rejection with respect to eligibility.   The courts have declined to define abstract ideas, other than by example, consequently, the 2014 IEG instructs examiners to refer to case law precedent in order to identify abstract ideas by way of comparison to concepts already found to be abstract.  The July 2015 update further indicates that examiners should not identify a claimed concept as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea.

The July 2015 update further reiterates that the examiner is required to clearly explain the reason(s) why the claimed invention is not eligible, if such an objection is made, so that the applicant is able to effectively respond.  Since the courts consider the determination of whether a claim is eligible to be a question of law, the courts do not rely on evidence that a claimed concept is a judicial exception.   Consequently, the examiners are not required to provide evidence of their determination of non-eligibility.  However, comparisons to concepts found to be exceptions in past court decisions when identifying a law of nature, a natural phenomenon, or an abstract idea are emphasised (Step 2A).

For Step 2B, examiners are advised to rely on what the courts have recognized, or those in the art would recognize, as elements that are well‐understood, routine and conventional. The courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner:

•    performing repetitive calculations;
•    receiving, processing, and storing data;
•    electronically scanning or extracting data from a physical document;
•    electronic record keeping;
•    automating mental tasks; and
•    receiving or transmitting data over a network, e.g., using the Internet to gather data.

In addition, the courts have held computer‐implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amounts to nothing more than generic computer functions merely used to implement an abstract idea.  In contrast, courts have held computer‐implemented processes to be significantly more than an abstract idea (and thus eligible), where generic computer components are able in combination to perform functions that are not merely generic.

The USPTO is now seeking public comment on this July 2015 Update.

Subject matter eligibility is an area of US law which is evolving over time and it will be interesting to see how the examiners implement the guidance and follow the examples laid out in the appendices.   The guidance should also provide valuable to applicants when preparing arguments as to the eligibility of a claim.

The 2014 Interim Guidance on Subject Matter Eligibility, and the July 2015 update can be found here.