United States: USPTO Issues July 2015 Updated Guidance On Subject Matter Eligibility Analysis

On July 30, 2015, the United States Patent and Trademark Office (USPTO) issued updated guidance regarding subject matter eligibility analysis to address six major themes from comments received in response to the 2014 Interim Guidance on Subject Matter Eligibility and seven additional examples of applying the subject matter eligibility analysis to claims in the business method, user interface, software, and mechanical arts. The six major themes addressed concerns from the public about: (1) additional examples for claims directed to abstract ideas, (2) clarification of the "markedly different characteristics" (MDC) analysis, (3) additional information on how examiners identify abstract ideas, (4) clarification of how a prima facie case is established and the role of evidence, (5) elucidation on how the interim guidelines were applied in the examining corps, and (6) explanation of the role of preemption for the eligibility analysis. The additional examples provided several different claims involving processing across multiple technological arts to clarify the process and analysis to be done to determined subject matter eligibility.

Following the 2014 Interim Guidance on Subject Matter Eligibility (issued by the USPTO in December of 2014 found here), the USPTO received over sixty comments from the public that prompted the USPTO to issue updated guidance (found here) along with an appendix of additional examples related to the computer arts and other technological arts utilizing computers (found here), an appendix indexing the USPTO's eligibility examples (found here), an appendix listing court decisions concerning subject matter eligibility (found here), and a quick reference sheet for the updated guidance (found here).

USPTO Response to Six Major Themes of Comments

The July 2015 Update on Subject Matter Eligibility identified six major themes from the comments received responsive to the 2014 Interim Guidance. The first major theme concerned the need for additional examples of subject matter eligible claims that include abstract ideas, particularly those in the business method, graphical user interface, and software arts. The additional examples also addressed another concern regarding how Step 2B from the 2014 Interim Guidance, regarding whether the claim recites additional elements that amount to significantly more than the judicial exception.

A second theme identified by the USPTO from the comments concerned the "Markedly Different Characteristics" (MDC) analysis and whether such analysis should be applied during Step 2A or Step 2B of the 2014 Interim Guidance test. After considering the comments, the USPTO concluded that the MDC analysis should be retained as part of Step 2A for three reasons: (1) applying the MDC analysis at Step 2A will result in earlier determinations of subject matter eligibility for claims that satisfy the MDC analysis, (2) applying the MDC analysis in Step 2A retains the additional pathway to eligibility of Step 2B for claims that fail the MDC analysis, and (3) maintaining the MDC analysis in Step 2A ensures all claims are consistently analyzed for eligibility, regardless of statutory category or type of exception.

A third theme concerned the need for further information on how the examining corps is to identify abstract ideas during the subject matter eligibility analysis. The July 2015 Update observed four particular categories of abstract ideas identified from Supreme Court and Federal Circuit decisions: (1) "fundamental economic practices," (2) "certain methods of organizing human activity," (3) "an idea 'of itself,'" and (4) "mathematical relationships/formulas."

  • The "fundamental economic practices" category includes "concepts relating to the economy and commerce, such as agreements between people in the form of contracts, legal obligations, and business relations." The term "fundamental" was clarified as "being foundational or basic, and not in the sense of necessarily being 'old' or 'well-known.'"
  • The "certain methods of organizing human activity" category includes those "concepts relating to interpersonal and intrapersonal activities, such as managing relationships or transactions between people, social activities, and human behavior; satisfying or avoiding a legal obligation; advertising, marketing, and sales activities or behaviors; and managing human mental activity." The July 2015 Update further clarified that the term "certain" is used to indicate that not all method of organizing human activity are abstract ideas and the category is not meant to cover human operation of machines.
  • The "an idea 'of itself'" category is to "describe an idea standing alone such as an instantiated concept, plan or scheme, as well as mental processes (thinking) that 'can be performed in the human mind, or by a human using pen and paper.'" The July 2015 Update noted that some "ideas" can fall under other abstract idea categories.
  • The "mathematical relationships/formulas" category "describe[s] mathematical concepts such as mathematical algorithms, mathematical relationships, mathematical formulas, and calculations."

A fourth theme addressed by the July 2015 Update concerned the requirements for establishing a prima facie case for subject matter ineligibility and the role of evidence in such a determination. The update stated that "the examiner's burden is met by clearly articulating the reason(s) why the claimed invention is not eligible, for example by providing a reasoned rationale that identifies the judicial exception recited in the claim and why it is considered an exception, and that identifies the additional elements in the claim (if any) and explains why they do not amount to significantly more than the exception." The July 2015 Update noted that the rationale may rely on generally available knowledge to those in the art, on case law precedent, on the applicant's disclosure, or on evidence. However, the USPTO indicated that whether a claim is ineligible is a question of law and courts do not rely on evidence to establish that a claim is directed to a judicial exception.

Moreover, the July 2015 Update indicated that several court decisions relied solely on comparisons to concepts found to be exceptions in past decisions without additional evidence and that additional elements identified as well-understood, routine and conventional in the art did not rely on cited evidence. The USPTO further indicated that the computer functions of "performing repetitive calculations; receiving, processing, and storing data; electronically scanning or extracting data from a physical document; electronic recordkeeping; automating mental tasks; and receiving or transmitting data over a network, e.g., using the Internet to gather data" were found by courts to be understood, routine and conventional in the art without requiring evidence. However, the listing was not intended to imply that all computer functions are well-understood, routine and conventional.

The fifth theme concerned the application of the 2014 Interim Guidelines by the USPTO examining corps. The July 2015 Update indicated that examiners have received eligibility guidance and training to address the concerns and indicated that the comments likely reflected rejections made prior to the issuance of the 2014 Interim Guidelines and additional training.

The final theme addressed the role of preemption and the streamlined analysis. The USPTO remarked that although "[t]he Supreme Court has described the concern driving the judicial exceptions as preemption . . . the courts do not use preemption as a stand-alone test for eligibility." Rather, questions of preemption are inherent in the two-part framework of the current subject matter eligibility test. Moreover, the July 2015 Update observed that "while a preemptive claim may be ineligible, the absence of complete preemption does not guarantee that a claim is eligible." As to the streamlined analysis for claims that "clearly do not seek to tie up any judicial exception such that others cannot practice it," the July 2015 Update indicated that such a test is not a preemption test and application of the full analysis would have the same eligibility result.

Seven Additional Examples Regarding Computer-implemented or Involving Processing

The July 2015 Update further included an appendix of seven illustrative examples of applying the subject matter eligibility analysis to claims in the business method, user interface, software, and mechanical arts. In particular, the examples included subject matter eligibility analysis of claims that would be ineligible as not reciting significantly more than the determined abstract idea, eligible as reciting significantly more than the determined abstract idea, eligible as not reciting a judicial exception, and self-evidently eligible using the streamlined analysis.

The illustrative examples included claims directed to the transmission of stock quote data (finding one claim ineligible and one claim eligible as reciting significantly more than the determined abstract idea), a graphical user interface for meal planning (finding the claim ineligible), a graphical user interface for relocating obscured textual information (finding one claim eligible as not reciting a judicial exception, two claims ineligible, and one claim eligible as reciting significantly more than the determined abstract idea), updating alarm limits (finding the claim ineligible), rubber manufacturing (finding both claims eligible as reciting significantly more than the determined abstract idea), an internal combustion engine (finding the claim eligible using the streamlined analysis), and system software – BIOS (finding the claim eligible using the streamlined analysis).

Conclusion

The July 2015 Update for subject matter eligibility provides the USPTO's response and clarification to six different themes resulting from the comments to the 2014 Interim Guidance as well as refining the USPTO's application of the subject matter eligibility analysis in light of subsequent court decisions. The update appears to provide much-needed additional guidance and clarification to both patent applicants and to the examining corps on the application of the two-part subject matter eligibility test. While it is unclear how or if the additional guidance will have an immediate impact on pending patent applications, the clarifications should assist patent applicants in addressing subject matter eligibility rejections at the USPTO.

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.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

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