U.S. Patent And Trademark Office Clarifies 'Patent Eligible Subject' Matter In Its Recent Guidance In Light Of Alice

Summary

On December 15, 2014, the U.S. Patent and Trademark Office (PTO) released its updated 2014 Interim Guidance on Patent Subject Matter Eligibility (the " Interim Eligibility Guidance") in light of the recent Supreme Court decision in Alice Corp. v. CLS Bank ("Alice")1, the Association for Molecular Pathology v. Myriad Genetics ("Myriad")2 and Mayo Collaborative Serv. v. Prometheus Labs. ("Mayo")3. The Interim Guidance Document states the PTO will use a two-pronged subject matter eligibility test in response to the Alice, Myriad, and Mayo decisions. This article summarizes the prongs of the test and provides some analysis about how the PTO is interpreting the language of Mayo, Myriad, and Alice under the Interim Eligibility Guidance.

Introduction

The Interim Eligibility Guidance provides revised instructions for PTO patent examiners to determine subject matter eligibility pursuant to 35 U.S.C. § 101, but "does not constitute substantive rulemaking and does not have the force and effect of law." Interim Eligibility Guidance at 4. However, the Interim Eligibility Guidance is meant to supersede the Manual of Patent Examining Procedure ("MPEP") § 2105 to the extent that the examiners reviewing an application that is potentially directed at a naturally occurring phenomena should no longer use the "mere human intervention" standard, but instead should evaluate whether the naturally occurring principles or substances have "markedly different characteristics to what occurs in nature." Id. at 6.

Subject Matter Eligibility Test

Consistent with the PTO's previous analysis, the Interim Eligibility Guidance calls for a two-pronged test to determine subject matter eligibility.

1. First Prong: Statutory Subject Matter

   The examiner should first determine whether the claim is directed towards a "process, machine, manufacture, or composition of matter," consistent with the requirements of 35 U.S.C. § 101. If the claim does not recite subject matter that falls under one of the four statutory categories, than the analysis terminates with a rejection pursuant to section 101. Otherwise, the examiner should proceed to the second prong of the test.

2. Second Prong: Judicial Exception Analysis Pursuant to Alice, Myriad, and Mayo

   The examiner should next determine whether the claim is "directed to a law of nature, a natural phenomenon, or an abstract idea"collectively, the "judicial exceptions." Id. at 10. This second prong of the PTO's test mirrors the two-part Mayo Test. The examiner should: (A)...