USPTO Issues Guidelines for Patent Subject Matter Eligibility

The United States Patent and Trademark Office (USPTO) recently issued supplemental guidelines for its patent examiners regarding subject matter eligibility (the Update).  The Update adds to previous guidance on the issue of patentable subject matter published by the USPTO in 2014 following the US Supreme Court (USSC) decisions on the topic in Alice Corp v CLS Bank and Mayo v Prometheus.  The Update clarifies the approach USPTO patent examiners will take when distinguishing between patentable subject matter and an abstract idea, the latter of which the USSC has made clear is not patent eligible.

Unfortunately, US courts have not clearly defined what constitutes an abstract idea.  Since the USPTO doesn’t have the authority to create that definition (it is a question of law), the Guidelines instead instruct examiners to find an abstract idea only when the concept in question parallels one previously found to be abstract by a US court.  Functionally, this ought to limit the circumstances in which patent examiners will raise eligibility objections to those previously accepted by a US court.

The Update also adds instructional examples focusing on abstract ideas in the areas of business methods and other human-mind activities, graphical user interfaces (GUIs), and software.

One aspect of the Update to note is that evidence is not necessarily required by an examiner for an eligibility rejection.  The Update notes this is in-line with the methodology employed by the courts, which “do not rely on evidence that a claimed concept is a judicial exception, and in most cases resolve the ultimate legal conclusion on eligibility without making any factual findings”.  However, despite not requiring evidence, patent examiners must still provide a clear articulation of an examiner’s reasons for rejection.

The USPTO is welcoming input to further improve the subject matter eligibility guidelines and develop content for future releases.

For further commentary, see this piece by Dennis Crouch at Patentlyo.