USPTO Announces 2019 Revised Patent Subject Matter Eligibility Guidance

On January 4, 2019, the United States Patent and Trademark Office ("USPTO") released a significant, much-awaited revision to its patentable subject matter eligibility guidance.1 The "2019 Revised Patent Subject Matter Eligibility Guidance" (the "Guidance") changes the USPTO's administrative procedures for determining whether a patent claim is directed to a judicial exception (e.g., a law of nature, natural phenomenon, or abstract idea) and thus ineligible for patent protection. The Guidance comes in response to numerous stakeholders' calls for clarification of the patent examination process under 35 U.S.C. § 101 and consistent application of court precedent by patent examiners. It is effective as of January 7, 2019.

As revised, in Step 1, examiners are to determine whether the claimed subject matter is directed to a statutory category of patentable subject matter (i.e., a machine, manufacture, process, or composition of matter). In Step 2A, prong one, examiners must evaluate whether the patent claim recites a judicial exception, and in prong two they must evaluate whether any recited judicial exception is integrated into a practical application. If a claim is not eligible at Step 2A, in Step 2B examiners must evaluate whether the claim has additional elements that amount to significantly more than a judicial exception and form an inventive concept. The USPTO reports that Steps 1 and 2B of its prior eligibility analysis are unchanged, but Step 2A is revised in multiple ways, most notably to include a two-pronged inquiry having more decision points at which patent claims may be found eligible.

First, Step 2A restricts the universe of patent-ineligible "abstract ideas" to three categories previously recognized by the courts: mathematical concepts, certain methods of organizing human activity, and mental processes. Under this framework, patent claims are automatically eligible unless they are directed to one of these three categories, except in "rare circumstances" ultimately requiring the intervention of the Technology Center Director and a justification for any subsequent determination of abstractness. Second, Step 2A provides that a patent claim reciting a judicial exception is not "directed to" the judicial exception if the judicial exception is "integrated into a practical application of the judicial exception." Each of these revisions introduces a significant new stopgap in the patent eligibility analysis, making it more likely that a...