Wednesday, 17 December 2014 00:25

USPTO Issues Latest Examiner Guidelines on Patent Eligibility

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The USPTO today issued an updated and comprehensive guideline regarding patent subject matter eligibility in view of the recent Supreme Court decisions in Alice CorpMyriad, and Mayo.  This "2014 Interim Guidance on Patent Subject Matter Eligibility" was published today, December 16, 2014.  

In assessing whether an invention is now patentable subject matter under 35 U.S.C. 101, a patent exmainer is to follow a three-step process:

  1. Is the claim directed to one of four statutory categories, i.e. a process, machine, manufacture, or composition of matter?; if yes,

  2. Is the claim then directed to one of the judicially recognized exceptions to eligible subject matter, i.e. to a law of nature, a natural phenomenon, or an abstract idea?; if yes,
    1. For a nature-based product, determine if it has characteristics (structure, function, or other properties) "markedly different" from natural product
  3. Does the claim recite additional elements that amount to significantly more than the judicial exception?

According to the notice, a claim is "directed to" a judicial exception when a law of nature, a natural phonemenon, or an abstract idea "is recited (i.e., set forth or described) in the claim." Claims that recite a judicial exception may still be patent eligible if they are "directed to inventions that clearly do not seek to tie up the judicial exception".  

Included in the notice are extensive examples that show what subject matter has been found eligible vs. ineligible.  The guidance is effective as of December 16, 2014, and applies to all applications filed before, on, or after this date.

For the full Federal Register notice on the patent eligibility guidelines, visit http://www.gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf.

Read 2612 times Last modified on Wednesday, 17 December 2014 00:57
Tony Guo

As a Registered Patent Attorney, Mr. Guo concentrates his practice in Patent Prosecution and Intellectual Property Litigation.  Mr. Guo has considerable hardware and software development experience, having worked in both development and IT roles for organizations such as Silicon Graphics International, Société Générale, and the University of Miami.  Mr. Guo earned his bachelor's degree in Computer Engineering from Purdue University, and his law degree, with honors, from the University of Miami School of Law.