On January 7, 2019, the U.S. Patent and Trademark Office (USPTO) issued new guidance on Patent Eligibility, seeking to improve the overall clarity, consistency, and predictability of patent eligibility analysis performed by the Office.

The 5 things practitioners need to know about the new guidance:

1. The new guidance eases the burden on patenting computer-implemented innovation.

The new guidance eases the burden on patenting computer-implemented innovation.  Specifically, under Step 2A (Prong One) of the Alice inquiry, Examiners must now determine whether the claimed subject matter falls into one of the enumerated categories provided by the new guidance: (1) Mathematical concepts; (2) Certain methods of organizing human activity; and (3) Mental processes.[1]

Thus, under the new guidance, claims that do not recite matter that falls within one of these groupings should pass the eligibility test, and the analysis should end, except in very rare circumstances.[2]

But an even more compelling change for computer-implemented innovation is how the Office will analyze claims even when the identified limitation(s) falls within the abstract idea groupings.  When an Examiner identifies a recitation of an abstract idea and proceeds to Prong Two of the Alice inquiry, it must evaluate whether the claim integrates the abstract idea into a practical application in the following manner:

• identify whether there are any additional elements recited in the claim beyond the judicial exception(s); and
• evaluate those additional elements individually and in combination to determine whether they integrate the exception into a practical application.[3]

This “practical application” analysis should prove promising for computer-implemented innovations.

2. There is still some ambiguity in the Guidance though, because the determination of a “practical application” is similar to the oft-maligned “significantly more” test from the post-Alice Interim Guidance.

Given that the Guidance must navigate the morass that is Federal Circuit precedence on eligibility, it is no surprise that there must be some ambiguity in the Guidance if patents examined pursuant to the Guidance are going to survive judicial scrutiny. 

According to the Guidance, claims integrate the abstract idea into a practical application when:

• an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
• an additional element implements the abstract idea with a particular machine or manufacture that is integral to the claim; and
• when an additional element applies or uses the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea  to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.[4]

Claims do not integrate an abstract idea into a practical application if:

• the additional elements merely recite the words “apply it” (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;
• the additional elements only add insignificant extra-solution activity to the judicial exception; and
• the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use.[5]

Nonetheless, fewer claims should reach the second prong of the step 2A analysis, given the new restrictions on Prong One of the Step 2A analysis. And, if a claim fails the eligibility test under the “practical application” Prong (Prong Two), the claim still has a chance under the Step 2B analysis.

3. The “well-understood, conventional, and routine” analysis will now be considered for all claim elements – even those previously deemed “insignificant” 

A key change in the guidance is that the Examiner’s analysis during Step 2A specifically excludes consideration of whether the additional elements represent well-understood, routine, and conventional activity.  Instead, this analysis is done in Step 2B.[6]

As a result of this approach, novelty of the alleged “abstract idea” and any other extra-solution activity can now contribute to the unconventionality of the claim as a whole such that the claim survives a patent-eligibility challenge—representing a stark contrast from how the USPTO previously treated claims in such situations.

4. Not all computer-implemented inventions are patent-eligible.

Although the path towards patent-eligibility should be smoother for computer-implemented innovation, not all computer-implemented inventions are patent-eligible (e.g., mathematical concepts that are merely implemented using generic computer components—without improving the functioning of the computer itself). The footnotes of the Guidance are dense, but are worth the read to see how the USPTO is walking the fine line of case law for this issue.

On the other hand, computer-implemented innovation that cannot be “practically performed” in the human mind can be patent-eligible.  This is good news for patent applicants, as it may reduce Examiners’ reliance on Electric Power Group when rejecting some data processing/analytics claims.

5. The new §101 guidance is not the only game in town—the new §112 guidelines related to CII’s must also be considered.

The USPTO also issued new guidance on the handling of computer-implemented inventions (CII’s) under 35 U.S.C. §112.  Thus, in addition to the new 35 U.S.C. §101 guidance, stakeholders of computer-implemented innovation should be aware of the new §112 guidance in order to avoid any §112 pitfalls as well.

* A previous version of this article first appeared in Law360.

[1] 2019 Revised Patent Subject Matter Eligibility Guidance, pp. 9-11.
[2] Id., p. 17.
[3] Id., p. 19.
[4] Id., pp. 19-20.
[5] Id., p. 21.
[6] Id., p. 19.