USPTO Issues Newly Updated Guidance On Subject Matter Eligibility That Further Clarifies Examination Standards Under 35 U.S.C. §101 In Light Of Alice V. CLS Bank

Over the past few years, the Supreme Court's decisions in Alice (Alice Corp. v. CLS Bank Int'l, 134 S.Ct. 2347 (2014)) and Mayo (Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)), and other cases relating to subject matter eligibility under 35 U.S.C. § 101 have resulted in significant changes in how the United States Patent and Trademark Office ("USPTO") examines patent applications. These changes present a new and important barrier to patentability of innovations that had long been considered patent-eligible, including many in the fields of software and other computer-implemented technologies, business methods, diagnostic approaches, and the like. All patent applications submitted to the USPTO are examined subject to the requirements set forth in 35 U.S.C. §§101, 102, 103, 112, which respectively address patent eligibility, novelty, inventiveness (e.g., non-obviousness), and disclosure and other formal requirements (e.g., enablement, written description, and clarity/definiteness). While Alice and Mayo set forth a basic framework ("the Alice/Mayo framework") for determining whether claimed subject matter is or is not eligible for patenting under US law, the Supreme Court did not provide clear guidance regarding the proper inquiries or criteria to be considered in applying the Alice/Mayo framework.

In brief, the Alice/Mayo framework directs an examiner to first determine whether a claim is directed to one of the statutory categories of patent-eligible subject matter (e.g., process, machine, manufacture, or composition of matter). If a claim passes this initial test, the examiner then applies a two-part test first set forth in Mayo and held by the Supreme Court in Alice to be applicable to claims directed to any type of subject matter. The two-part test involves first determining (Step 2A) whether the claim, as a whole, is directed to at least one of several judicial exceptions, which include laws of nature, natural phenomena, and abstract ideas. Non-limiting examples of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an "idea of itself," and mathematical relationships or formulas. If the claim is determined to be directed to one of the judicial exceptions, the second part (Step 2B) of the two-part test requires analysis of whether any element, or combination of elements, in the claim is sufficient to ensure that the claim, as a whole, amounts to significantly more than the judicial exception.

While lower courts, including the Court of Appeals for the Federal Circuit ("the Federal Circuit") and the USPTO's Patent and Trademark Appeal Board ("the PTAB"), have provided some further guidance in applying the framework to several additional cases, a great deal of uncertainty and confusion remains. In an effort to provide improved guidance and training for its examiners relating to this important issue, the USPTO has published "examination guidance" three times — in June and December [1] of 2014 and most recently on July 30, 2015 ("the July Guidance"[2]) — since Alice was decided.

The USPTO July Guidance provides additional examples of subject matter eligible claims in various technologies as well as sample analyses applying the Supreme Court and Federal Circuit's considerations for determining whether a claim is subject matter eligible.[3]

An improvement to the current examination environment at the USPTO should result from the explicit requirement in the July Guidance that examiners must present a prima facie case that claims to be rejected under 35 U.S.C. §101 are subject matter ineligible. The July Guidance notes that this requirement is intended "to guide examiners in satisfying their burden and ensuring that they reject on eligibility grounds only where appropriate" and further notes an emphasis on "performing a thorough analysis and writing a clear rejection" as "a critical part of satisfying the examiner's burden." Additionally, the July Guidance advises examiners to "stay within the confines of the judicial precedent" and "ensure that a claimed concept is not identified as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea." We expect these clarifications to the examination framework to benefit both examiners and applicants. In particular, applicants facing a rejection under 35 U.S.C. §101 will benefit from being provided with clear and explicit explanations of the grounds for a rejection and from being able to...