United States: US Patent Office Issues Updated Guidance Regarding Patentable Subject Matter

On July 30, 2015, the United States Patent and Trademark Office (USPTO) issued updated guidance on subject-matter eligibility under 35 U.S.C. 101, intended to "assist examiners in applying the 2014 Interim Patent Eligibility Guidance during the patent examination process."1 Below, we provide a brief summary of the updated guidance, which includes a "July 2015 Update," three appendices and a Quick Reference sheet.
The USPTO is currently seeking comments from the public relating to the new guidance.

July 2015 Update: Subject Matter Eligibility

The July 2015 Update includes a description of six "major themes" the USPTO developed based on public comments received in response to its 2014 Interim Patent Eligibility Guidance (IEG):

  1. In response to "requests for additional examples, particularly for claims directed to abstract ideas and laws of nature,"2 the USPTO has provided additional examples in Appendix 1 to be used in conjunction with the examples from the 2014 IEG. These additional examples are intended to "assist examiners and the public in applying the principles of the 2014 IEG."
  2. For claims directed to nature-based products, the 2014 IEG states that Step 2A of the Alice test involves determining whether the claimed subject matter and its naturally-occurring counterparts have "markedly different characteristics" (MDC).3 Some commenters suggested moving the MDC analysis to Step 2B. In response, the USPTO explains in the July 2015 Update that it has decided to retain the MDC analysis in Step 2A because it allows claims to qualify as eligible earlier in the analysis, provides an additional pathway to eligibility for claims directed to 'product of nature' exceptions, and ensures "that all claims are consistently analyzed for eligibility regardless of statutory category or the type of exception recited."
  3. In response to requests for "further information regarding how examiners identify abstract ideas," the updated guidance points out that "the 2014 IEG instructs examiners to refer to the body of case law precedent in order to identify abstract ideas by way of comparison to concepts already found to be abstract." The July 2015 Update also provides further clarification regarding certain categories of abstract ideas, including "Fundamental economic practices," "Certain Methods of Organizing Human Activity," "An Idea 'Of Itself,'" and "Mathematical relationships/formulas."
  4. Following a "discussion of the prima facie case and the role of evidence with respect to eligibility rejections," the July 2015 Update explains that to establish a prima facie case for lack of subject-matter eligibility, an Examiner must "clearly articulat[e] the reason(s) why the claimed invention is not eligible." An Examiner's rationale for finding a lack of subject matter eligibility can be based on "case law precedent, on applicant's own disclosure, or on evidence."
  5. Regarding the "application of the 2014 IEG in the corps," the USPTO explains that Examiners have been given guidance materials and additional training (in particular, the three appendices provided with the July 2015 Update are intended to assist Examiners during examination).
  6. Regarding the USPTO's "streamlined analysis" for making quick determinations regarding patent-eligibility, the July 2015 Update notes that the streamlined analysis procedure "provides an important benefit to applicants and examiners by permitting claims whose eligibility is self‐evident to qualify as eligible without performing a full eligibility analysis." In particular, the July 2015 Update states that the streamlined analysis procedure described in the 2014 IEG "is consistent with the case law precedent" regarding the question of preemption raised by the Supreme Court in Alice.

July 2015 Update Appendix 1: Examples

Appendix 1 includes additional examples of patent-eligible and patent-ineligible claims, to be used in conjunction with the examples provided in the 2014 IEG. These examples include claims directed to transmitting stock quote data, graphical user interfaces for meal planning and for relocating obscured textual information, methods for updating alarm limits using mathematical formulae, methods used in rubber manufacturing, internal combustion engines, and methods for loading a BIOS into a local computer system.

July 2015 Update Appendix 2: Index of Eligibility Examples

Appendix 2 includes a table of the examples included in the 2014 IEG and the July 2015 Update, explaining how the steps of the patent-eligibility test set forth in Alice were applied in each of the example cases.

July 2015 Update Appendix 3: Subject Matter Eligibility Court Decisions

Appendix 3 provides a list of representative cases decided by the Supreme Court and the Court of Appeals for the Federal Circuit that deal with subject-matter eligibility. For each of these cases, the Appendix provides background information regarding the subject matter of the patents at issue, as well as a summary of the conclusions reached by the relevant court.

July 2015

The Quick Reference Sheet provides a brief summary of the July 2015 Update and the appendices, along with an infographic that provides further guidance on identifying abstract ideas.

1 80 Fed. Reg. 45429 (July 30, 2015).
2 July 2015 Update: Subject Matter Eligibility.
3 See Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014). For a more detailed description of the Alice test, see WilmerHale Client Update, "USPTO Issues Updated Guidance on Patent Subject Matter Eligibility" (December 17, 2014).

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.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
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
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.


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.


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