The United States Patent Office periodically issues guidelines for Examiners, often in response to a recent court decision or new statute. These guidelines do not have the force of law, but nevertheless establish the specific procedures that examiners apply during examination of patent applications. Consequently, consider these guidelines when preparing new patent applications and prosecuting pending patent applications.
New examination guidelines were issued on June 25, 2014 (the “Guidelines”), in response to the recent Supreme Court decision in Alice Corp. v. CLS Bank International that addressed the subject matter eligibility under 35 U.S.C. § 101 of claims related to an abstract idea. The Guidelines provide preliminary instructions for analyzing claims involving an abstract idea, and the applicability of these instructions to many technology areas. As such, they are worthy of attention from applicants in the software and business method fields, as well as in other areas. Although the Patent Office has not yet finalized the Guidelines, the preliminary version governs examination presently and provides insight into the Patent Office’s own understanding of the case law and how it will be applied during day-to-day prosecution of applications.
The recent court decision on which the Guidelines are based, Alice Corp. v. CLS Bank International, addressed the patent eligibility of a method for reducing settlement risk by effecting trades through a third-party intermediary, a computer system configured to carry out the method, and a computer-readable medium containing program code for performing the method. From this decision, the Patent Office developed the Guidelines; however, Examiners will not limit their use to cases involving business transactions. Examiners will use a test outlinedin the Guidelines to determine the patent eligibility of all categories of claims. Furthermore, the test complements, but does not supersede, previous guidelines based on Prometheus v. Mayo that are used to analyze the patent subject-matter eligibility of claims involving natural laws and natural products. The Patent Office states that the new Guidelines differ from the previous framework in two ways, namely (i) claims involving abstract ideas should not be treated differently than other claims when determining subject-matter eligibility and (ii) the same analysis should be used for all categories of claims, instead of treating product claims and process claims differently.
The test outlined in the Guidelines includes two steps: (i) determine if the claim is directed to an abstract idea and (ii) if an abstract idea is present in the claim, determine whether any element or combination of elements ensures that the claim is directed to significantly more than the abstract idea itself.
Consequences for Patent Practice
With its first step focused on the notion of “an abstract idea”, the test may ultimately be applied to many technology areas because the Patent Office, like the Supreme Court in the opinion for CLS Bank v. Alice, does not provide a definition of an abstract idea, leaving the meaning of the term and the scope of the test open to interpretation. However, the Patent Office does provide a few examples of abstract ideas, including fundamental economic practices, certain methods of organizing human activity, mathematical relationships and formulae, and “and idea itself.” While these examples of abstract ideas suggest that analyzing patent claims to avoid abstraction will continue to be important for inventors with patent applications directed to software or business methods, there is little guidance as to the scope ofwhat may constitute an abstract idea. Therefore, anyone with applications outside these areas should also expect to see rejections under this new test, particularly if the claim involves application of a technique using a computer.
Building upon the Patent Office’s recent guidelines on natural laws and natural products based on the teachings of the Prometheus v. Mayo and Myriad cases, the new Guidelines provide a familiar read with respect to whether a claim directed to an abstract idea claims “significantly more” than the judicial exception to patent-eligible subject matter. Similar to the previous guidelines for natural products and natural laws, the test based on CLS Bank v. Alice sets forth factors and characteristics to which Examiners and applicants may analogize to provide information on precisely when a claim recites “significantly more” than an abstract idea and, thus, claims patent-eligible subject matter. The test suggests that if the claims include improvements to another technology or technical field, improvements to the functioning of a computer (as opposed to mere implementation of an idea using a computer), or other meaningful limitations beyond linking the idea to a technological environment, then the claim will likely be directed to patent-eligible subject matter. In contrast, claims that only apply the abstract idea, implement it using a computer, or require a computer to perform known and generic functions or conventional activities will likely not be patent-eligible. The Patent Office is expected to provide additional examples and clarification upon release of final guidelines.
Further Clarification from the Patent Office
As the present Guidelines are only preliminary, the Patent Office will come out with final instructions in due course. Nevertheless, there are some hints as to the form the final guidelines may take. For example, the previous natural laws and natural products guidelines currently note that claims that may be directed to abstract ideas should be examined separately; however, as expressly noted in the memorandum accompanying the present Guidelines, the Prometheus v. Mayo framework is also applied. In light of this, the Patent Office will likely provide a series of examples applying factors similar to those in the natural laws and natural products guidelines. The Patent Office may even provide a new combination document addressing how claims including any type of judicial exception should be treated.
At present, the Patent Office is seeking comments and feedback from the public. Based on analysis of the preliminary guidelines and comment process that led to the final guidelines for examination of claims directed to natural laws or natural products, the comment process will likely play a large role in shaping the structure and details of the final guidelines for abstract ideas. Accordingly, applicants with portfolios including applications that may be interpreted to include an abstract idea, regardless of the technology area, should strongly consider submitting comments to the Patent Office regarding the scope and application of the Guidelines.
Time will tell whether more frequent non-statutory subject matter rejections will result from the preliminary instructions based on CLS Bank v. Alice. New rejections may also be seen in areas outside of business methods or software as well. Preventing or overcoming these rejections may be possible using a forward-thinking approach that includes adding detailed descriptions of all elements that could be understood to be “significantly more” than just an abstract idea, such as improvements to another technology or technical field, improvements to the functioning of the computer itself, or limitations beyond a general link between the abstract idea and a particular technological environment.
 Memorandum from Andrew H. Hirshfeld, Deputy Comm’r for Pat. Examination Pol’y, to Pat. Examining Corps (June 25, 2014) [hereinafter Guidelines] available at http:// http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf.
 Alice Corporation Pty. Ltd. v. CLS Bank International, slip op. (2014).
 35 U.S.C. § 101 states as follows: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
 Mayo Collaborative Servs. v. Prometheus Lab., Inc., 132 S. Ct. 1289 (2012).
 Guidelines at 2-3.
 Id. at 3.
 Id. at 2–3.
 Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)
 Memorandum from Andrew H. Hirshfeld, Deputy Comm’r for Pat. Examination Pol’y, to Pat. Examining Corps at 2 (March 4, 2014) available at http://www.uspto.gov/patents/law/exam/myriad-mayo_guidance.pdf.
 Guidelines at 2.