The USPTO has issued revised guidance for subject matter eligibility under 35 U.S.C. § 101.1 The revised guidance aims to bring greater clarity and predictability to the Alice/Mayo test2 for subject matter eligibility. The guidance makes two primary changes to the USPTO’s approach for determining whether a claim is directed to a judicial exception (laws of nature, natural phenomena, and abstract ideas), discussed below.

Three Categories of Abstract Ideas

First, for a patent claim to be considered as directed to an abstract idea, the claim must fall into at least one of three categories:

  1. Mathematical concepts, which includes mathematical relationships, mathematical formulas or equations, mathematical calculations.
  2. Certain methods of organizing human activity, which includes fundamental economic principles or practices commercial or legal interactions, managing personal behavior or relationships or interactions between people.
  3. Mental processes, which include concepts performed in the human mind such as observation, evaluation, judgment, and opinion.

These three categories apply only to abstract ideas, and do not apply to judicial exceptions related to laws of nature or natural phenomena.3

Step 2A of the Alice/Mayo Test

Second, the revised guidance provides a two-pronged analysis for determining whether a claim is “directed to” a judicial exception. This two-pronged analysis breaks down Step 2A of the Alice/Mayo test.4

The first prong requires the USPTO to evaluate whether a claim recites a judicial exception. This prong is similar to the USPTO’s current approach except that when determining whether a claim recites an abstract idea, the Patent Office now addresses the previously discussed three categories of abstract ideas. If it is determined that the claim does not recite a judicial exception based on the first prong, the claim is considered patent eligible and the eligibility analysis is concluded, except under “rare circumstances” discussed below. Alternatively, if it is determined that the claim recites a judicial exception based on the first prong, the claim requires further analysis based on the second prong.5

The second prong adds a more detailed eligibility analysis to Step 2A of the Alice/Mayo test than was required under prior guidance. The second prong involves assessing whether the claim recites additional elements that integrate the judicial exception into a practical application. If it is determined that the judicial exception is integrated into a practical application, the claim is considered subject matter eligible and the eligibility analysis is concluded. If, however, a claim recites a judicial exception (under the first prong) and does not integrate the judicial exception into a practical application (under the second prong), further analysis under Step 2B (inventive concept) of the Alice/Mayo test is warranted. The analysis under Step 2B remains similar to procedures in prior guidance.6

Step 2B of the Alice/Mayo Test

Step 2B analysis of the Alice/Mayo test remains similar to the analysis in the prior guidance.7 This analysis states that a claim may recite an inventive concept if an additional claim element adds a limitation that is not “well-understood, routine, conventional activity”8 in the field. In such a case, the claim is eligible under Step 2B of the Alice/Mayo test. However, if the additional claim element “simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception,” an inventive concept may not be present.9 In such a case, the claim is ineligible under Step 2B of the Alice/Mayo test.

“Rare” Case For A Claim Directed To Be An Abstract Idea

The USPTO has indicated that in certain “rare” circumstances in which a patent examiner believes that a claim limitation is an abstract idea that does not fall within the previously discussed three categories of abstract ideas, the patent examiner should assess whether the claim as a whole is subject matter eligible under Step 2A or Step 2B of the Alice/Mayo test. If the patent examiner determines that the claim is ineligible under both steps, the examiner should bring the application to the attention of the Technology Center Director for approval that the tentative abstract idea is indeed an abstract idea prior to making any rejection under Section 101.10

Conclusion

The revised guidelines provide additional guidance for determining that a claim is directed to an abstract idea when such claim does not fall into any of the three categories specifically articulated by the Patent Office. The USPTO explicitly states that “any claim considered patent eligible under prior guidance should be considered patent eligible under [the revised] guidance.”11 The revised guidelines do not settle the ongoing question of what counts as abstract, nor do they have the force and effect of law. However, the guidelines articulate USPTO policy and provide guidance for responding to subject matter eligibility issues by identifying specific categories of abstract ideas and providing a two-pronged framework for Step 2A of the Alice/Mayo test.

  1. “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101.
  2. In Alice Corp. v. CLS Bank International, 134 S. Ct. 2347, 2352 (2014) the Supreme Court identified two steps (step 1 and step 2) from Mayo v. Prometheus, 132 S. Ct. 1289 (2012) for determining subject matter eligibility under 35 U.S.C. § 101 for patent claims. In the MPEP, the USPTO categorizes these two steps identified by the Supreme Court as step 2A and step 2B, respectively. See MPEP §§ 2106 (III), 2106.04(II), 2106.05. The MPEP identifies step 1 as follows: “Is the claim a process, machine, manufacture, or composition of matter?” See MPEP §§ 2106 (III), 2106.03.
  3. Revised guidance at 7-11.
  4. Id. at 15.
  5. Id. at 16-18.
  6. Id. at 18-22.
  7. Id. at 22.
  8. “The question of whether additional elements represent well-understood, routine, conventional activity is distinct from patentability over the prior art under 35 U.S.C. §§ 102 and 103.” Subject Matter Eligibility Memo (April 19, 2018) at 3.
  9. Revised guidance at 22.
  10. Id. at 25-26.
  11. Id. at 7.