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:
- Is the claim directed to one of four statutory categories, i.e. a process, machine, manufacture, or composition of matter?; if yes,
- 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,
- For a nature-based product, determine if it has characteristics (structure, function, or other properties) "markedly different" from natural product
- 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.