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Patent Office Revisits Subject Matter Eligibility and Addresses Certain Functional Claim Limitations in New Guidance

on Friday, 25 January 2019 in Technology & Intellectual Property Update: Arianna C. Goldstein, Editor

On January 7, 2019, revised guidance from the United States Patent and Trademark Office on patent subject matter eligibility took effect, paving the way for what many stakeholders expect to be a decrease in the number of patent claim rejections under 35 U.S.C. §101. The guidance attempts to provide a definition of “abstract idea” that is more definite than what was previously available under Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014), jurisprudence. Through the revised guidance, the Patent Office aims to make it easier for applicants to predict what subject matter is patent eligible, and to increase consistency in the application of § 101.

Section 101 provides that one who invents a “new and useful process, machine, manufacture, or composition of matter . . . may obtain a patent therefor,” and has been the subject of much controversy since Alice, in which the Supreme Court promulgated a two-step test to determine whether a given subject matter is patent eligible under § 101. Under Alice, an examiner must decide whether a claim is directed to a “judicial exception” such as a law of nature, a natural phenomenon, or an abstract idea. If the claim is not directed to a judicial exception, the Alice analysis stops, and the invention is deemed to be subject matter eligible. If the claim is directed to a judicial exception, the Alice analysis continues with an assessment of whether the application claims additional elements that amount to significantly more than the judicial exception. If so, the claimed invention qualifies as eligible subject matter.

Consistent application of Alice, particularly in the case of an abstract idea, has become difficult because examiners, when considering whether a claim is directed to an abstract idea under the first step of the Alice test, are required to consider previously-decided examples of similar subject matter. The Federal Circuit has ruled on the subject matter eligibility of a large number of cases—and, frequently, its identification of subject matter as abstract in one case is inconsistent with its identification of similar subject matter as not abstract in another. Many applicants and practitioners are frustrated by this inconsistency because it makes patent predictability difficult—leading some to believe it allows examiners to “cherry pick” favorable precedent in order to formulate a § 101 rejection.

The new guidance attempts to reduce reliance on precedent by examiners under Alice by setting forth three categories of abstract ideas: mathematical concepts, certain methods of organizing human activity, and mental processes. If a claim recites subject matter that does not fall within one of these three categories, the claim should not be treated as being directed to an abstract idea, constituting patent eligible subject matter under the first prong of Alice. If, on the other hand, a claim recites subject matter that does fall within one of the three categories of abstract ideas, the examiner must determine whether the abstract idea is integrated into a practical application. If the abstract idea is so integrated, the claim is not “directed to” an abstract idea and the subject matter is patent eligible, again under the first prong of Alice. If the abstract idea is not integrated into a practical application, the analysis continues under the traditional Alice framework to determine whether the claim recites additional elements that amount to significantly more than the judicial exception.

While the § 101 guidance, in theory, should serve to reduce unpredictability with respect to § 101 and Alice, it is unclear if the Federal Circuit (or the Supreme Court, for that matter) will adopt the guidance as law when given the opportunity.

In addition to the revised § 101 guidance, the Patent Office also released new guidance regarding the examination of computer-implemented functional claim limitations under 35 U.S.C. § 112. The § 112 guidance requires that, when considering a functional claim drawn to computer-implemented inventions, an examiner applies the applicable presumption (based on the presence of the term “means” in the claim) and three-prong analysis under existing law, including by making a determination as to whether the claim sets forth sufficient structure for performing the recited function. The guidance also requires that, for a computer-implemented § 112(f) claim limitation, the specification must disclose an algorithm for performing the entirety of the claimed function in order to satisfy 35 U.S.C. § 112(b), including where one of ordinary skill in the art is capable of writing software that performs the function.

Even where a claim is not examined as a mean-plus-function claim under § 112(f), the new guidance requires that computer-implemented functional claim language still satisfy the written description and enablement requirements of § 112(a)—and requires that the specification disclose both the hardware and the algorithms that achieve the claimed function in sufficient detail to enable one of ordinary skill in the art (i) to make and use the claimed invention, and (ii) to conclude that the inventor possessed the claimed invention.

According to the Patent Office, both guidance documents are intended to produce reasonably consistent and predictable results across applications and throughout the Patent Office. The public is invited to submit written comments regarding the § 101 guidance to, and on the § 112 guidance to

Patrick M. Kennedy

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