2014 Interim Guidance on Patent Subject Matter Eligibility

Drew Hirshfeld Deputy Commissioner for Patent Examination Policy

Washington in the West January 30, 2015

35 U.S.C. § 101 - Judicial Exceptions

Supreme Court has long held that § 101 excludes certain subject matter from patent eligibility:

– Abstract Ideas – Laws of Nature/Natural Principles – Natural Phenomena (including Products of

Nature/Natural Products)

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Recent Supreme Court Activity Regarding Judicial Exceptions

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Bilski (2010) Mayo (2012) Myriad (2013) Alice Corp. (2014)

Abstract Idea Law of Nature Product of Nature Abstract Idea

Prior Eligibility Guidance

• Guidance/Instructions after each Supreme Court decision

– Alice Corp. Preliminary Instructions issued June 25, 2014

• March 4, 2014 Guidance on Laws of Nature/Natural Principles, Natural Phenomena, and Natural Products

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Most Recent Eligibility Guidance

2014 Interim Guidance on Patent Subject Matter Eligibility (Dec. 16, 2014)

– Incorporates principles from the body of legal precedent, in particular Alice Corp., Myriad and Mayo

– Addresses areas highlighted by public feedback

– Supplements the June 25, 2014 Preliminary Instructions

– Supersedes the March 4, 2014 Guidance

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§101 Subject Matter Eligibility Test for Products and Processes

Step 1: Is claim directed to one of the four statutory categories?

Step 2: Two-part analysis that evaluates whether a claim is directed to subject matter encompassing a judicial exception.

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Step 2A: “Directed to” a Judicial Exception

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Step 2A: Is the claim directed to a law of nature, a natural phenomenon, or an abstract idea?

─ “Directed to” means the exception is recited in the claim, i.e., the claim sets forth or describes the exception

─ If no, the claim is eligible and examination should continue for patentability

─ If yes, examiners are to proceed to Step 2B to analyze whether the claim as a whole amounts to significantly more than the exception

Step 2A: Markedly Different Characteristics Analysis

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• The courts have held that “products of nature” fall under the laws of nature or natural phenomena exceptions

• Thus, the markedly different characteristics analysis is part of Step 2A, i.e., it helps answer the question of whether a claim is directed to an exception

Step 2A: Abstract Ideas

The types of concepts that fall under “Abstract Ideas” have been identified by the courts only by example, and include:

– Fundamental economic practices – Certain methods of organizing human activities – Ideas, themselves – Mathematical relationships/formulas

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Step 2B: Significantly More

Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?

– Elements of the claim are considered both individually and as an ordered combination to evaluate the claim as a whole

– This has been termed a search for an ‘‘inventive concept”

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Step 2B: “Significantly More” Considerations

Limitations that may be enough to qualify as “significantly more” when recited in a claim with a judicial exception:

– Improvements to another technology or technical field

– Improvements to the functioning of the computer itself

– Applying the judicial exception with, or by use of, a particular machine

– Effecting a transformation or reduction of a particular article to a different state or thing

– Adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application

– Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment

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Step 2B: “Significantly More” Considerations

Limitations that were found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception:

– Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer

– Simply appending well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception

– Adding insignificant extrasolution activity to the judicial exception

– Generally linking the use of the judicial exception to a particular technological environment or field of use

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Notable Changes From Prior Guidance

• New integrated approach for eligibility

– applies to all claims

• Claims must be directed to a judicial exception to trigger full analysis, not merely involve or be based upon an exception (narrows the funnel)

• Evaluation of “significantly more” in the claim is simplified to focus on the “inventive concept”

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Changes From Prior Guidance

For “products of nature”:

– Markedly different characteristics can be shown in a product’s structure, function, and/or other properties

– Eligibility can be shown by markedly different characteristics without evaluating “significantly more”

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Public Forum

A Public Forum was held Jan. 21, 2015

– Common themes: • A step in the right direction, but more is still needed

• USPTO was responsive to feedback

• Case law is developing and gaps need to be fleshed out, especially with additional examples

• Concerns regarding examiner implementation

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Examples

Two sets of examples have been developed to illustrate the application of the Interim Eligibility Guidance

– Both show eligible and ineligible claims, in accordance with case law and based on hypothetical fact patterns

– Examples of nature-based products (Dec. 16, 2014)

– Examples of abstract ideas (Jan. 27, 2015)

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Examples: Nature-Based Products

Key Teaching Points

– Function and other non-structural characteristics can demonstrate markedly different characteristics

– Purified and isolated products may have markedly different characteristics and therefore be eligible

– A product that lacks markedly different characteristics may be eligible under Step 2B (significantly more)

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Examples: Abstract Ideas

Key Teaching Points

– “Software” and business method claims are not automatically directed to abstract ideas

– Mere existence of a computer or routine and conventional elements in a claim does not mean that the claim is ineligible

– Claims that are directed to an exception may be eligible under Step 2B (significantly more)

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Next Steps

• Examiner Training has started

• Additional examples are being developed

• Developing guidance is an ongoing process and may be updated in view of judicial developments and feedback from the public and the examining corps

– Public comment period through March 16, 2015

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Additional Resources

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• General page for examination guidance and training materials

http://www.uspto.gov/patents/law/exam/examguide.jsp

• Specific page for the December 2014 Interim Eligibility Guidance

http://www.uspto.gov/patents/law/exam/interim_guidance_subject_matter_eligibility.jsp

─ Includes the Guidance document, additional claim examples and relevant case law

─ All updates will be posted to this page

Thank You