On July 30, 2015, the United States Patent and Trademark Office
(USPTO) released a set of documents providing examiners and
practitioners with additional guidance on patent subject matter
eligibility. The July 2015 Update responds to comments received
from the public following the USPTO's issuance of the 2014
Interim Guidance (2014 IEG) on December 26, 2014.
The Update responds to "six themes" from the over sixty
comments received by the USPTO on its previous Guidance on 35
U.S.C. § 101: (1) additional examples, particularly for
abstract ideas and laws of nature; (2) further explanation on why
the "markedly different characteristics" (MDC) analysis
for "product of nature" claims will remain part of step
2A; (3) further information on how examiners identify abstract
ideas; (4) discussion of the prima facie case and role of evidence
in rejections; (5) information regarding application of the 2104
Interim Guidance by the examiners; and (6) explanation of the role
of "preemption" in the analysis. Besides the Update and a
"Quick Reference Sheet," the USPTO provided three
Appendices which include new examples of eligible/ineligible
claims, a comprehensive index of the 27 case studies that appear in
both the 2014 IEG and the present Guidance, and a table of relevant
Supreme Court and Federal Circuit decisions.
In short, the USPTO indicated it will retain the current Steps 2A
and 2B Alice/Mayo analysis outlined in the 2014 IEG,
including the "streamlined analysis" available for claims
that "clearly do not seek to tie up any judicial exception
such that others cannot practice it." Because the courts have
declined to define "abstract ideas," the USPTO instructs
examiners to identify abstract ideas in Step 2A "by way of
comparison to concepts already found to be abstract," which
the USPTO groups into four "types of concepts": 1)
"fundamental economic practices"; 2) "certain
methods of organizing human activity"; 3) "an idea of
itself"; and 4) "mathematical
relationships/formulas."
To further assist examiners and practitioners, the Update includes
in Appendix 1 seven "new" detailed examples of the
hypothetical examination process for claims in the business method,
graphical user interface (GUI), and software areas. Four are
modeled after (and reach the same conclusion as) existing court
decisions but explain in detail how examiners should apply a
similar subject eligibility analysis during examination. Three
hypotheticals warrant closer scrutiny as they are truly
"new."
Example 23 contains four (two eligible/two ineligible) claims
relating to GUIs. The two ineligible claims recite abstract ideas
but not "significantly more." Of particular interest here
is the analysis of eligible claims 1 and 4, which are similar
except for the three additional "calculating" and scaling
steps in claim 4. Somewhat surprisingly, the guidance concludes, in
Step 2A, that the broader claim 1 describes no abstract idea, and
therefore the claim is eligible, needing no further analysis. Claim
4, despite reciting all of claim 1's steps and being more
detailed, is found to recite an abstract idea in Step 2A because of
the presence of the calculating and scaling steps, even though
those steps are performed by a computer processor. The USPTO
concludes that claim 4 is ultimately eligible when all elements are
taken as a whole and as an ordered combination, but needs more
analysis than the broader claim 1.
In examples 26 and 27, the USPTO applies the streamlined patent
eligibility analysis to claims comprising computer-implemented
elements. Although the claim in example 26 recites a control system
that "calculates a position" of a valve based on a
"rate of change of the engine throttle position" and
changes the position of the valve based on the calculated position,
this claim to an internal combustion engine is found immediately
eligible on the streamlined analysis. The USPTO acknowledges a
"mathematical relationship" in one of the elements but
finds the claim as a whole passes muster because it is
"immediately evident" that the claim does not "tie
up" the mathematical relationship so others cannot use it and
further it "improves engine technology."
In example 27, the USPTO provided a streamlined analysis of a claim
to "a method for loading BIOS [Basic Input/Output
System] into a local computer system." The USPTO opined
that, although computers operate on mathematical theory, the
eligibility of the three-element claim was "self-evident"
because there is "no apparent exception" (such as
"performing a mathematical relationship to obtain a
result") recited in the claim.
From these new examples, including example 25 (the Diehr example), it appears
any recitation of "calculating" prevents streamlined
analysis and forces it into the "significantly more"
analysis. Without explicitly recited "calculations," a
claim may be immediately eligible even if calculations take place
behind the scenes.
As for Step B, the USPTO noted that, since courts had not required
evidence to support a finding that additional elements were
well-understood, routine or conventional, examiners can rely on
their expertise and take judicial notice.
Finally, in response to concerns about applying the guidelines by
examiners, the USPTO confirmed that the initial burden remains with
the examiner, and the USPTO will continue to provide guidance and
training to examiners with the goal of providing more predictable,
consistent examination. While the current Update focuses more on
computer-related claims, further guidance and examples involving
claims directed to laws of nature and natural phenomena are
forthcoming.
Public comments on the Update are solicited and due by October 28,
2015
The full July 2015 Update is available here.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.