On January 7, 2019, the United States Patent and Trademark Office (USPTO) published new guidance for patent examiners intended to address concerns expressed by Federal Circuit judges, industry stakeholders, and others about the perceived lack of predictability and clarity in determining subject matter eligibility under 35 U.S.C. § 101.  See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).  The guidance, which is intended for use by USPTO personnel in evaluating subject matter eligibility, “revises the procedures for determining whether a patent claim or patent application claim is directed to a judicial exception (laws of nature, natural phenomena, and abstract ideas).”  Id.  This new guidance represents an attempt by the USPTO to address “the legal uncertainty surrounding Section 101,” recognizing that “[m]any stakeholders, judges, inventors, and practitioners across the spectrum have argued that something needs to be done to increase clarity and consistency in how Section 101 is currently applied.”  Id.

While patentability issues under § 101 have been the focus of lawmakers and are pending before the Supreme Court, the USPTO has taken steps to “provide predictable and reliable patent rights in accordance with [a] rapidly evolving area of the law.”  84 Fed. Reg. at 51.  To this end, the new guidance explains that: (1) “abstract ideas can be grouped as, e.g., mathematical concepts, certain methods of organizing human activity, and mental processes,” and (2) “a patent claim or patent application claim that recites a judicial exception is not ‘directed to’ the judicial exception if the judicial exception is integrated into a practical application of that exception.”  Id. at 50.  By grouping abstract ideas into categories, the USPTO intends to enable “personnel to more readily determine whether a claim recites subject matter that is an abstract idea.”  Id. at 51.  Except in “rare circumstance[s],” “[c]laims that do not recite matter that falls within the[] enumerated groupings of abstract ideas should not be treated as reciting abstract ideas.”  Id. at 53.  The changes to the “directed to” framework are intended to “draw distinctions between claims to principles in the abstract and claims that integrate those principles into a practical application.”  Id. at 51.  Under the USPTO’s new procedure, if a claim recites a judicial exception to patentability (i.e., “a law of nature, a natural phenomenon, or an abstract idea”), the claim “must then be analyzed to determine whether the recited judicial exception is integrated into a practical application of that exception.  A claim is not ‘directed to’ a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception.”  Id. at 53.  The guidance further explains that 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  It also makes clear that “any claim considered patent eligible under prior guidance should be considered patent eligible under this guidance.”  Id. at 51. 

The USPTO’s new guidance to examiners applies retroactively and prospectively, namely “to all applications, and to all patents resulting from applications, filed before, on, or after January 7, 2019.”   Id. at 50.  While not binding on courts, the guidance may decrease the total number of § 101 rejections while providing greater clarity and predictability for examiners and applicants.  Meanwhile, the evolution of § 101 law will continue.  As the guidance states, “[t]he USPTO’s ultimate goal is to draw distinctions between claims to principles in the abstract and claims that integrate those principles into a practical application.  To that end, the USPTO may issue further guidance, or modify the current guidance, in the future based on its review of the comments received, further experience of the USPTO and its stakeholders, and additional judicial actions.”