Subject matter eligibility guidance explains how the United States Patent Trade Office (USPTO) personnel including patent examiners should evaluate claims for patent subject matter eligibility under 35 U.S. Code, Section §101.

The USPTO will reject a patent application that does not meet the requirements of patentability. One of these requirements is that the invention is of the right type of subject matter, which is described in Section 101 of the Patent Act.

This statutory section states that patents may be granted on “any new and useful process, machine, manufacture, or composition of matter.” An invention is also patentable if it meets the following four requirements:

  • the invention must be statutory (subject matter eligible)
  • the invention must be new
  • the invention must be useful
  • the invention must be non-obvious

An invention is not patentable if it is not the right type of invention. An invention must also avoid a judicially created “exception” to patentable subject matter if it is to be considered a patentable type of invention. Recent case law, Alice Corp v. CLS, has identified three different exceptions:

  1. abstract ideas
  2. laws of nature
  3. natural phenomenon

The “abstract idea” exception to the patentable subject matter is particularly important for patents relating to software, mobile-device apps and the Internet. After the Supreme Court’s explanation of the abstract idea exception, many are of the opinion that a large percentage of software-related inventions are no longer patentable.

In January, the USPTO published the 2019 Guidance (2019 PEG) in the Federal Register and sought public comment on the guidance. On October 17, the USPTO provided notice of an update to the 2019 PEG, which addressed widespread discussion and concern over Section 101 issues relating to the patent-ineligible concepts of abstract ideas, and natural laws/phenomena. Based on the comments received, the USPTO produced this guidance Update.

The guidance does not change the 2019 PEG but provides further explanation on how the USPTO applies such guidance. It includes a new set of examples and clarifies issues with respect to the groupings of abstract ideas. The update provides additional information on how the USPTO determines if a claim “recites” an abstract idea and how groupings within the abstract idea exception are determined. It also explains the procedures examiners can use to identify “tentative abstract ideas.” The update includes additional helpful examples in the life sciences and data processing areas.

If you have questions about the subject matter eligibility of your invention, the attorneys at Ferrence & Associates have the knowledge and experience to guide you through the complicated patent process.

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