United States: USPTO Issues May 2016 Subject Matter Eligibility Update

A new USPTO memo directs Examiners to provide more detail and support when rejecting patent applications under Section 101 of the Patent Act.

A common criticism of the USPTO's implementation of subject matter eligibility issues is its use of boilerplate analyses when asserting that a patent application merely claims an abstract idea or naturally-occurring phenomenon. The new memo, released on May 4, 2016, directs Examiners to be more specific in their responses, to consider all language of each claim, and to provide legal support for their rejections. The memo states: "If the original rejection did not identify a Supreme Court or Federal Circuit decision in which a similar abstract idea was found and applicant challenges identification of the abstract idea, the examiner would need to point to a case in which a similar abstract idea was identified and explain why the abstract idea recited in the claim corresponds to the abstract idea identified in the case to maintain the rejection."

Guidance relating to abstract idea rejections

When asserting that a patent application claims an abstract idea, the new memo states that Examiners must refer to specific claim language to "identify the judicial exception by referring to what is recited ... and explain why it is considered an exception" and "should not go beyond those concepts that are similar to what the courts have identified as abstract ideas."

The memo also notes that "an additional element...may be enough to qualify as 'significantly more' if it meaningfully limits the judicial exception, improves another technology or technical field, improves the functioning of a computer itself, or adds a specific limitation other than what is well-understood, routine, conventional activity in the field or unconventional steps that confine the claim to a particular useful application. In addition, even if an element does not amount to significantly more on its own (e.g., because it is merely a generic computer component performing generic computer functions), it can still amount to significantly more when considered in combination with the other elements of the claim. For example, generic computer components that individually perform merely generic computer functions (e.g., a CPU that performs mathematical calculations or a clock that produces time data) in some instances are able in combination to perform functions that are not generic computer functions and therefore amount to significantly more than an abstract idea (and are thus eligible)."

Guidance relating to law of nature, product of nature and natural phenomena rejections

In the life science area, the new memo states that Examiners must identify the law of nature, product of nature, or natural phenomenon as it is recited "and explain using a reasoned rationale why it is considered a law of nature or natural phenomenon."

The USPTO also updated its set of life science eligibility examples for Examiners and applicants to consider.

Guidance common to all rejections

If an Examiner finds an abstract idea, law or product of nature or natural phenomenon in the claim, the memo states that the Examiner must consider the claim elements "both individually and as a combination" when determining whether the claim covers more than just the abstract idea. The guidance notes: "It is important to remember that a new combination of steps in a process may be patent eligible even though all the steps of the combination were individually well-known and in common use before the combination was made."

When an Examiner finds that particular claim limitations are well understood, routine, or conventional, "the rejection should explain why the courts have recognized, or those in the relevant field of art would recognize, those claim limitations as being well-understood, routine, conventional activities."

Notably, the memo states that Examiners should not rely on USPTO examples that do not carry the weight of court precedent. This guidance is also relevant to applicants, since the USPTO's examples can be useful but do not carry the weight of legal authority.

The memo also warns applicants that an argument that the claim "does not preempt all applications of the exception" will not in itself save the claim. The memo notes that "preemption is not a standalone test for eligibility."

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.

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