Today, the U.S. Patent and Trademark Office announced “revised guidance for subject matter eligibility under 35 U.S.C. § 101,” and “guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions.”  The guidance documents are available in the Federal Register and will take effect on Monday, January 7, 2019.

According to a USPTO Press Release issued today, the guidance under Section 101 makes two primary changes to how Examiners will apply the first step of the Supreme Court’s Alice/Mayo test, “which determines whether a claim is ‘directed to’ a judicial exception”:

  • “First, in accordance with judicial precedent and in an effort to improve certainty and reliability, the revised guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes certain groupings of subject matter: mathematical concepts, certain methods of organizing human activity, and mental processes.
  • Second, the revised guidance includes a two-prong inquiry for whether a claim is ‘directed to’ a judicial exception. In the first prong, examiners will evaluate whether the claim recites a judicial exception and if so, proceed to the second prong. In the second prong, examiners evaluate whether the claim recites additional elements that integrate the identified judicial exception into a practical application. If a claim both recites a judicial exception and fails to integrate that exception into a practical application, then the claim is “directed to” a judicial exception. In such a case, further analysis pursuant to the second step of the Alice/Mayo test is required.”

The guidance under Section 112 is intended to describe “proper application of means-plus-function principles under § 112(f), definiteness under § 112(b), and written description and enablement under § 112(a),” specifically as they relate to computer-implemented inventions.

The USPTO is taking public comments on the issues addressed by the guidance documents, with written comments accepted until March 8, 2019.  The address for written comments is: Eligibility2019@uspto.gov.