USPTO publishes revised patent eligibility guidelines to clarify examination under 35 USC §101

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The US Patent and Trademark Office published revised guidelines to increase clarity and consistency in the examination of patent applications under 35 U.S.C. § 101. While the revised guidelines do not change the overall framework of patent-eligibility analysis, they provide a clearer approach for determining patent-eligible subject matter and may offer a lower hurdle for applicants. The revised guidelines follow Director Andrei Iancu’s desire for more clarity and simplification.

As before, the new approach entails considering whether the claimed subject matter falls within four statutory categories of patentable subject matter identified by 35 U.S.C. § 101—process, machine, manufacture or composition. If the claimed subject matter falls within one of the these categories, examiners must first determine whether the claimed subject matter is directed toward an abstract idea (step 2A). If so, examiners then must determine whether the claimed subject matter provides an inventive concept significantly more than the abstract idea (step 2B).

While the two-step approach remains the same, examiners are no longer required, under the new approach to step 2A, to compare claims to those already found to be directed to an abstract idea in previous cases. Instead, the revised guidelines identify the following categories to be abstract: mathematical concepts (e.g., mathematical relationships and formulas); organizing human activity (e.g., hedging, insurance and risk mitigation); and mental processes (e.g., observation, evaluation and opinion).1 In the revised step 2A, examiners must address two prongs. First, examiners are now required to identify whether the claimed subject matter is directed toward at least one of the above-described abstract ideas (Step 2A, prong one).2 If the first prong is satisfied, examiners must determine whether the claim as a whole integrates the judicial exception into a practical application of the exception (Step 2A, prong two).3 In rare circumstances in which an examiner believes a claim limitation that does not fall within the enumerated groupings of abstract ideas, the claim limitation should nonetheless be treated as reciting an abstract idea.4

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.”5 The revised guidelines provide the following five exemplary considerations as indicative that a claim may have integrated the exception into a practical application:

  1. An additional element reflects an improvement in the functioning of a computer, or a technical field;
  2. An additional element applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
  3. An additional element implements or uses a judicial exception in conjunction with a particular machine or manufacture that is integral to the claim;
  4. An additional element effects a transformation or reduction of a particular article to a different state or thing; and
  5. An additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.6

The revised guidelines also identify three examples in which a judicial exception has not been integrated into a particular application:

  1. An additional element merely recites 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.;
  2. An additional element adds insignificant extra solution activity to the judicial exception; and
  3. An additional element does no more than generally link the use of the judicial exception to a particular technological environment or field of use.7

If the claim is determined to have integrated a judicial exception into a practical application, the claim recites patent-eligible subject matter, thereby concluding the eligibility analysis. If not, examiners will move to step 2B and determine whether the claim provides significantly more than the judicial exception.8 As described in the revised guidelines, it is possible that a claim that does not integrate a recited judicial exception is nonetheless patent-eligible by reciting additional elements that represent an inventive concept. While many considerations in Step 2A need not be reevaluated in Step 2B, examiners are instructed to continue to consider whether an additional element or combination of elements:

  1. Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
  2. Simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.

Under Step 2B, if examiners determine that the element (or combination of elements) amounts to significantly more than the judicial exception itself, the claim is eligible under § 101, thereby concluding the eligibility analysis.

The revised guidelines will be effective from January 7, 2019, for all applications, and patents resulting from applications, filed before, on or after January 7, 2019.


  1. 2019 Revised Patent Subject Matter Eligibility, Pg. 9-11.
  2. Id. at 16-18.
  3. Id. at 18-22.
  4. In these rare circumstance, the revised guidelines require the examiner to evaluate whether the claim as a whole integrates the recited tentative abstract idea into a practical application (as described in Step 2A, prong two). If the claim satisfies this inquiry, the claim is not directed to a judicial exception (Step 2A: NO). If the claim fails this inquiry, then the examiner must evaluate the additional elements to determine whether they provide an inventive concept (as described in Step 2B). If the examiner identifies an inventive concept, the claim is eligible. If not (Step 2B: No), the examiner should bring the application to the attention of the Technology Center Director.
  5. Id. at 18.
  6. Id. at 19-20.
  7. Id. at 21.
  8. Id. at 22-24

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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