U.S. Patent and Trademark Office Updates Examination Guidelines for Determining Subject Matter Eligibility

Software Patents Could Make a Comeback With Updated Guidance

U.S. Patent and Trademark Office Updates Examination Guidelines for Determining Subject Matter Eligibility

The U.S. Patent and Trade Office has again revised the examination guidelines for subject matter eligibility for patents under 35 USC § 101. The changes clarify what subject matter is “abstract” with the aim of improving the clarity, consistency, and predictability of patent examination, particularly in the field of software and computer-implemented inventions.

What to Know

• New examination guidelines took effect on January 7th, 2019
• What is “abstract” must still be in accordance with controlling case law, but the Patent Office hopes the new examination guidelines will help to strengthen patents relating to software and computer-implemented inventions.
• The revised examination guidelines also include changes with regard to written description, enablement, definiteness, and means-plus-functions principles under 35 USC § 112, again particularly as they relate to software and computer-implemented inventions.
• The USPTO details the two key changes as follows:
  • “…the revised guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes certain groupings of subject matter: mathematical concepts, certain methods of organizing human activity, and mental processes. “
  • “…the revised guidance includes a two-prong inquiry for whether a claim is “directed to” a judicial exception. In the first prong, examiners will evaluate whether the claim recites a judicial exception and if so, proceed to the second prong. In the second prong, examiners evaluate whether the claim recites additional elements that integrate the identified judicial exception into a practical application.”
     

How to Act

While it will take some time to assess the impact of the new examination guidelines, the expressed goal of the Patent Office is to strengthen the U.S. patent system by ensuring the consistent, predictable, and correct application of these principles across the agency.
 

Cases to Reference

• Alice Corp. v. CLS Bank International
• Enfish, LLC v. Microsoft Corp
• McRO v. Bandai Namco Games America  

Additional Resources

• USPTO Announcement
• Ars Technica Software Patent Article