Patent Riffs and Links – 2019 Eligibility Guidance Offers Help Against Alice

On Friday, January 4, 2019, the USPTO released the “2019 Revised Patent Subject Matter Eligibility Guidance” via the Federal Register, as to be implemented by all examiners and PTAB judges starting Monday, January 9, 2019. The new guidance includes some new USPTO examples that hope to clarify the analysis under the “2019 PEG.”

For those who rely on the MPEP, there is also a new chart depicting what changes have been made with the 2019 PEG. New Form paragraphs, Frequently Asked Questions, and Sample Rejections are “COMING SOON” and will be available at the USPTO Subject matter eligibility microsite.

UPDATE (1/8):

UPDATE (1/10):

  • Patent Quality webinar slides

Here are some other helpful links:

U.S. Patent and Trademark Office announces revised guidance for determining subject matter eligibility | CONTENT.GOVDELIVERY
“The United States Patent and Trademark Office (USPTO) today announced revised guidance for subject matter eligibility under 35 U.S.C. § 101… The documents take effect Monday, January 7, 2019.

‘These guidance documents aim to improve the clarity, consistency, and predictability of actions across the USPTO,’ said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu. ‘The USPTO will provide training to examiners and administrative patent judges on both documents to ensure that guidance is being properly administered.'”

USPTO Releases New Guidance on §101 and §112 Eligibility | MAIERANDMAIER
“For §101, the guidance provides two key changes: identifying specific categories of concepts defined as abstract and providing a two-step analysis for how to deal with such concepts when determining eligibility under §101.

By listing out the specifically identified concepts defined as abstract, the USPTO hopes to bring more structure to §101 objections and force analysis to specifically identify the category and caselaw behind the objection. The concepts the guidance lists as abstract from court decisions are as follows: mathematical concepts, certain methods of organizing human activity, and mental processes.

The two-step analysis is also aimed at reigning in objections to any subject matter relating to one of those concepts. ”

Revised Patent Eligibility Guidance Effectively Defines What is an Abstract Idea | IPWATCHDOG
“The revised guidance also 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.”

Read these Eligibility Guidelines from the USPTO | PATENTLYO
“Although these guides do not have the force of law, they are quite important because they direct the bureaucratic process — telling examiners how to examine patent applications for these issues. Examiner performance will be adjudged based upon their ability to comply with the guidance. In general, I would expect that examiners will be more quickly swayed by citations to the guidelines rather than to citations to particular court decisions. Examiners will be trained in the upcoming weeks and training materials will be available at the PTO website…

In the new 2019 iteration, the PTO has attempted to synthesize case law in a way that is practical for examiners. The PTO is also suggesting that this approach will be more reliable and more predictable. The USPTO does not have the power to shift the legal definition of eligibility. However, the Agency is given discretionary authority to design a practical administrative mechanism for implementing the law as given. That is how I see the PTO’s approach here.

USPTO Issues New 101/112 Guidance | PATENTSPOSTGRANT
“The ‘2019 Revised Patent Subject Matter Eligibility Guidance’ makes two primary changes to how patent examiners apply the first step of the U.S. Supreme Court’s Alice/Mayo test, which determines whether a claim is ‘directed to’ a judicial exception…

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.

While this test mentions patent examiners specifically, it is expected that the entire agency (i.e., PTAB judges) will also follow this framework. (It remains to be seen whether the Federal Circuit will agree that reigning in the abstract idea step of Alice/Mayo to focus on judicial exceptions is consistent with established law).”

DEPARTMENT OF COMMERCE | S3.AMAZONAWS
The PDF: “Impact on Examination Procedure and Prior Examination Guidance: This 2019 Revised Patent Subject Matter Eligibility Guidance supersedes MPEP 2106.04(II) (Eligibility Step 2A: Whether a Claim Is Directed to a Judicial Exception) to the extent it equates claims ‘reciting’ a judicial exception with claims ‘directed to’ a judicial exception, along with any other portion of the MPEP that conflicts with this guidance. A chart identifying portions of the MPEP that are affected by this guidance will be available for viewing via the USPTO’s internet website (http://www.uspto.gov). This 2019 Revised Patent Subject Matter Eligibility Guidance also supersedes all versions of the USPTO’s ‘Eligibility Quick Reference Sheet Identifying Abstract Ideas’ (first issued in July 2015 and updated most recently in July 2018). Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should not be relied upon. However, any claim considered patent eligible under prior guidance should be considered patent eligible under this guidance.”

2019 Revised Patent Subject Matter Eligibility Guidance | FEDERALREGISTER.GOV
“Since the Alice case, courts have been ‘compare[ing] claims at issue to those claims already found to be directed to an abstract idea in previous cases.’ [9] Likewise, the USPTO has issued guidance to the patent examining corps about Federal Circuit decisions applying the Alice/Mayo test, for instance describing the subject matter claimed in the patent in suit and noting whether or not certain subject matter has been identified as an abstract idea.[10]

While that approach was effective soon after Alice was decided, it has since become impractical. The Federal Circuit has now issued numerous decisions identifying subject matter as abstract or non-abstract in the context of specific cases, and that number is continuously growing. In addition, similar subject matter has been described both as abstract and not abstract in different cases.[11] The growing body of precedent has become increasingly more difficult for examiners to apply in a predictable manner, and concerns have been raised that different examiners within and between technology centers may reach inconsistent results.”

USPTO Patent Eligibility Revamp Expected To Cut Rejections | LAW360
Subscription only: “The U.S. Patent and Trademark Office released new guidance for examiners Friday on when applications contain patent ineligible material like abstract ideas, a move attorneys say will likely lead to fewer…”

USPTO Updates Patent Examination Guidelines for Computer-Implemented Inventions: Less Abstract Ideas, More Specific Algorithms | IPSPOTLIGHT
“Taken together, the new guidance documents may narrow the situations in which Examiners issue rejections under Section 101 of the Patent Act, but may expand the number of rejections issued under Section 112 of the Patent Act. The documents indicate that inventors who want to patent computer-implemented inventions must be sure that the patent application: (a) describes and claims a practical application of the invention; and (b) discloses specific algorithms for performing claimed functions.”

New USPTO Patent-Eligibility Guidance Is a Material Change | B2IPREPORT
“Nonetheless, the new patent-eligibility guidance is a material change. First, the purpose of the new guidance appears to be to reduce rejections under 35 U.S.C. § 101 for patent-eligible subject matter, and to make such rejections easier to overcome. Moreover, moving significant portions of the patent-eligibility analysis from Alicestep two to Alice step one has the very material effect of removing from the § 101 analysis the factual requirement that claim elements are non-routine, not fundamental, or unconventional. In other words, the new guidance could be seen as effectively removing factual requirements for patent-eligibility that examiners had previously been told to consider.

Back to the practical question: how to apply the new guidance in preparation and prosecution of patent applications for computer-related inventions? The answer, I think, is that the practitioner is advised to make only subtle changes in practice.”

What is Director Iancu Proposing the USPTO do for §101 Analysis? | IPWATCHDOG
THROWBACK: “This is a key first step to be added into, e.g., what Step 2A currently looks like. This ‘new approach’ may require the examiner to articulate that the claims fall into one of the three categories before proceeding to decide whether the claims are ‘directed to’ those categories.
Now, an examiner could potentially include many things under these categories, such as any time the claims look like a business method or compare information, but there appears to be an additional step of saying ‘Yes, this falls into a category of judicial exception. Now we look at whether the claim is ‘directed to’ a judicial exception.’
Director Iancu then offers an explanation of what ‘directed to’ actually would mean…”

Citations and links:

2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019).

https://www.federalregister.gov/documents/2019/01/07/2018-28282/2019-revised-patent-subject-matter-eligibility-guidance

https://www.govinfo.gov/content/pkg/FR-2019-01-07/html/2018-28282.htm

https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf

https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility