United States: USPTO Revised Patent Eligibility Guidelines Significantly Eases Path To Obtaining Computer-Related Patents

Last Updated: March 15 2019
Article by Anders Fernstrom and Christopher Hutter

On January 7, 2019, the United States Patent and Trademark Office (USPTO) issued the 2019 Revised Patent Subject Matter Eligibility Guidance, a major update to the examination guidelines for evaluating whether a patent claim is patent eligible under 35 U.S.C. § 101. The revised guidelines primarily address the patent eligibility analysis that most typically arises in patent applications that can be characterized as being related to business methods and software. Rejection rates for patent ineligible subject matter spiked following the Supreme Court's 2014 Alice Corp. v. CLS Bank Int'l decision. Subsequent developments in the case law by the Federal Circuit have provided some relief to some applicants, but applicants seeking patent protection in the impacted technology fields have continued to face challenges and uncertainty in prosecuting their patent applications.

The 2019 Revised Patent Subject Matter Eligibility Guidance marks a turning point in the USPTO's treatment of the patent eligibility question for computer-related patent applications. The revised guidelines are the latest in a series of documents in which the USPTO seeks to instruct its employees to apply the patent eligibility standards set forth by the Supreme Court. These guidelines are the first major revision to the USPTO's examination standards since the appointment of Director Iancu, who has expressed a desire to improve the predictability and reliability of the examination process.

Prior to the promulgation of the revised guidelines, patent examiners and administrative law judges on the Patent Trial and Appeal Board (PTAB) were instructed to apply a two part test: first examine a claim to determine whether it is "directed to" a judicial exception (abstract idea, law of nature, or natural phenomenon) and, if so, determine whether additional claim elements amount to "significantly more," with reference to a growing body of case law and USPTO example analyses. In practice, examiners leaned heavily on form paragraphs and frequently failed to carefully engage the claimed subject matter or the case law. Allowance rates fell to below 30% in several art units in the first few years after Alice, and the PTAB affirmed examiner patent eligibility rejections at monthly rates of rate of 66 – 97%.

The revised guidelines insert an additional requirement for the USPTO to find a claim patent ineligible. As part of determining whether a claim is "directed to" patent ineligible subject matter, the USPTO is instructed to first determine whether the claim falls within one of the following groups:

  1. Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
  2. Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions);
  3. Mental processes – concepts performed in the human mind 14 (including an observation, evaluation, judgment, opinion).

Claims that do not fall within one of the three enumerated groups, except in rare situations, are patent eligible. If a claim does fall under one of the three groups, the USPTO evaluates the claim to determine whether the judicial exception is "integrated into a practical application." Together this bifurcated "directed to" analysis should provide applicants additional opportunities to convince examiners and the PTAB that their claimed technology is patent eligible. It is too early to see the full impact of the revised guidelines, but there has been a marked increase in the PTAB reversing patent eligibility rejections, and, anecdotally, patent examiners have expressed views that the revised guidelines produce easier allowances.

The revised patent eligibility guidance was paired with an update to guidelines for examining whether patent claims are sufficiently definite, adequately supported by the original description, and enabled, with a focus on computer-related technologies. The revised guidelines to patent eligible subject matter smooth the path to patentability for computer-related technologies that do not fall within one of the three clearly enumerated categories and which are integrated into a practical application. The revised guidelines for claim interpretation, however, are designed to prevent applicants pursuing computer-implemented patent protection from straying from the path laid out by the originally filed description.

The USPTO's guidelines are not binding on the courts. While the revised guidelines may make it easier for applicants to obtain issued patents from the USPTO, if challenged, there remains the possibility that such patents could be invalidated by the courts.

Key takeaways

Companies seeking patent protection in computer-related fields may find a more receptive audience at the USPTO than at any time since 2014. Applications that were thoughtfully drafted and contain robust and specific disclosures will particularly benefit, given the heightened examination standards for original support.

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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