United States: USPTO Issues "2014 Interim Guidance On Patent Subject Matter Eligibility"

On December 15, 2014, the USPTO published a document titled "2014 Interim Guidance on Patent Subject Matter Eligibility" (Interim Guidance). The new Interim Guidance follows the previous preliminary examination instructions issued on June 25, 2014, in view of CLS v. Alice (2014), and was published as a notice for comments and may therefore be updated depending on public feedback.1 The new Interim Guidance combines the earlier guidance for claims reciting abstract ideas with the March 4, 2014, guidance for claims reciting natural phenomena and laws of nature.2

Under the new Interim Guidance, examiners are instructed to first determine whether the claim is directed to one of the four statutory categories of 35 USC §101 (i.e., process, machine, manufacture, or composition of matter). If so, the examiner is instructed to apply a two-part patent-eligibility analysis, as articulated by the Supreme Court in Alice. In sum, examiners are instructed to apply the two-part analysis to the broadest reasonable interpretation of the claims when analyzed as a whole. A flowchart titled "Subject Matter Eligibility Test for Products and Processes" is provided for examiners, and a copy is set forth below.

According to the Interim Guidance, the flowchart illustrates the subject matter eligibility analysis for products and processes to be used during examination for evaluating whether a claim is drawn to patent-eligible subject matter. The Interim Guidance states that the analysis set forth "promotes examination efficiency and consistency across all technologies."3 In sum, according to the Interim Guidance, the claimed invention (Step 1) "must be directed to one of the four statutory categories" and (Step 2) "must not be wholly directed to subject matter encompassing a judicially recognized exception." Referring to the flowchart, Step 1 is represented in diamond (1), which is explained in MPEP 2106(I). Step 2 is represented in diamonds (2A) and (2B) and is the subject of the Interim Guidance. Step 2 is the two-part analysis from Alice for claims directed to laws of nature, natural phenomena, and abstract ideas (the judicially recognized exceptions).

Laws of Nature/Natural Phenomena

Laws of nature and natural phenomena are described as including naturally occurring principles/substances and substances that do not have markedly different characteristics compared with what occurs in nature. According to the Interim Guidance, the types of concepts courts have found to be laws of nature and natural phenomena include the following non-limiting examples:

  • an isolated DNA (Myriad);
  • a correlation that is the consequence of how a certain compound is metabolized by the body (Mayo);
  • electromagnetism to transmit signals (Morse); and
  • the chemical principle underlying the union between fatty elements and water (Tilghman).

Abstract Ideas

According to the Interim Guidance, abstract ideas have been identified by the courts as including fundamental economic practices, certain methods of organizing human activities, an idea "of itself," and mathematical relationships/formulas. Citing previous cases, the Interim Guidance provides examiners with specific examples of abstract ideas:

  • mitigating settlement risk (Alice);
  • hedging (Bilski);
  • creating a contractual relationship (buySAFE);
  • using advertising as an exchange of currency (Ultramercial);
  • processing information through a clearinghouse (Dealertrack);
  • comparing new and stored information and using rules to identify options (SmartGene);
  • using categories to organize, store, and transmit information (Cyberfone);
  • organizing information through mathematical correlations (Digitech);
  • managing a game of bingo (Planet Bingo);
  • the Arrhenius equation for calculating the cure time of rubber (Diehr);
  • a formula for updating alarm limits (Flook);
  • a mathematical formula relating to standing wave phenomena (Mackay Radio); and
  • a mathematical procedure for converting one form of numerical representation to another (Benson).


On a positive note, there is nothing in the Interim Guidance to suggest that the USPTO is taking the position that business methods or software are per se ineligible for patent protection. This is good, in our opinion. Moreover, the USPTO's summary of case law as set forth in the Interim Guidance seems to be generally acceptable (although some have commented that the case law summary is not entirely accurate).

The real problem, however, is that the case law itself may not be amenable to clearly defined guidelines. In our view, the reality is that the court decisions themselves are inconsistent, and so there remains considerable uncertainty in how the law will be applied. It is therefore unclear whether the new Interim Guidance will help examiners or applicants tell the difference between what is and what is not patent-eligible.

For emerging companies with software-related innovations, the question remains: "Should we seek patent protection?" As a practical matter, this question can be answered only on a case-by-case basis. At a high level, applicants should consider whether the invention can be described in such a way as to avoid the characterization that it is no more than an "abstract idea," or whether it can be described as including an "inventive concept sufficient to transform the abstract idea into a patent-eligible application." These are inherently vague concepts that require careful patent drafting in view of the relevant case law. For example, a category of software that clearly remains patent-eligible is software that improves the operation of a computer itself — e.g., software that improves the speed or security of a computer. If the invention can be described in this way, patent eligibility under §101 should not be a significant barrier to obtaining patent protection. Finally, it should be noted that, assuming there is no clear, absolute bar to patentability, the decision whether to file will involve financial considerations.4

On the other hand, the USPTO has recently been rejecting business method patent applications, and examination of applications in the business method area has all but stalled at the USPTO. This may change after the USPTO implements the Interim Guidance and the case law is further developed. For now, it may be best for applicants to delay prosecution on the merits by filing provisional patent applications directed to inventions in the "business method" area. A provisional application can provide the company with a cost-effective way to keep its options open while the USPTO settles on more permanent guidelines.

Other strategies to consider when developing a company's patent portfolio include bringing already issued patents into compliance with the more recent guidelines via a reissue application (see Addressing Section 101 Issues Through Reissue), and Don't Miss the Window for Post-Grant Review: Monitor Your Competitors by Creating Alert Systems.



1 See our previous articles here and here.

2 The Interim Guidance is described as supplementing the June 25, 2014, Preliminary Examination Instructions in view of the Supreme Court decision in Alice (June 2014 Preliminary Instructions), and superseding the March 4, 2014, Procedure For Subject Matter Eligibility Analysis of Claims Reciting or Involving Laws of Nature/Natural Principles, Natural Phenomena, and/or Natural Products (March 2014 Procedure) issued in view of the Supreme Court decisions in Myriad and Mayo.

3 Interim Guidance, p. 8.

4 The mere pendency of a patent application may have business value. If worse comes to worse, the application can be abandoned. The question is whether the company is willing to risk $X knowing there is less than a Y% chance that the application will be deemed patent-eligible.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement

    Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of www.mondaq.com

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at enquiries@mondaq.com.

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions