USPTO Director Andrei Iancu made some interesting remarks on September 24, 2018 at the Intellectual Property Owners Association Annual Meeting in Chicago regarding a proposal for new guidance on how the Office might approach determination of subject matter eligibility under §101 in the near future. He summarized saying:
In sum, the proposed guidance for Section 101, which addresses step 1 of Alice, would explain that eligibility rejections are to be applied only to claims that recite subject matter within the defined categories of judicial exceptions. And even then, a rejection would only be applied if the claim does not integrate the recited exception into a practical application. This provides significantly more clarity for the great bulk of cases.
Much of the worry about this proposal is directed at issues regarding (i) reconciling precedent and (ii) permanency.
The industry will have to wait for more USPTO guidance/memos before implementation, but here are some interesting thoughts and comments in the meantime:
Contributed by me: "Perhaps it is that simple—practical applications of the judicial exceptions are eligible while mere principles are not eligible…
This speech …harkens back to Director Iancu’s April 11, 2018 remarks at U.S. Chamber of Commerce Patent Policy Conference where Director Iancu identified the concerns of increased uncertainty in §101 determinations and … asserted that ‘Currently, we’re actively looking for ways to simplify the eligibility determination for our examiners through forward-looking guidance. Through our administration of the patent laws, which we are charged to execute, the USPTO can lead, not just react to, every new case the courts issue.’ This new approach appears to fulfill that promise of a simplification and leadership."
USPTO Director Iancu Proposes Revised 101 Guidance | Written Description (Lisa Oulette)
"I am sympathetic to the difficult position Director Iancu is in, with stakeholders clamoring both for more consistency in how § 101 is applied and for changes to the substantive standard. But the agency must ensure that any revised guidance on patentable subject matter is consistent with the relevant judicial precedent. And despite the outcry from the patent bar, I have seen little evidence that the recent shift in patentable-subject-matter doctrine has in fact created a crisis for U.S. innovation."
The New Step 1B… Under the proposed new guidance, once a claim is determined to recite a “process, machine, manufacture, or composition of matter” as required by the statutory language of §101 (USPTO Step 1), an examiner would determine if the claims recite subject matter within one of the enumerated categories of exceptions. According to the Director, ‘This is the new approach.’"
"The Director proposes that by going back to Judge Rich, ‘and keep[ing] rejections in their own distinct [statutory] lanes.’ The standard the Director proposes is that, ‘[i]f the claims can be fixed by slightly different claiming, by narrower claiming, or by more definite claiming, this is likely a ‘conditions’ problem—not a subject matter problem.’ He recognizes that some things, like gravity or DNA, are not patent eligible — he is not an extremist or absolutist. But he proposes to provide categories of patent ineligible subject matter like the statute provides patent eligible subject matter categories…
[The] methodology is supported, according to the Director, by Supreme Court precedent including Le Roy v. Tathem (1853), and Diamond v. Diehr (1980), and even Mayo v. Prometheus (which the Director cited for the teaching that "applications of such concepts to a new and useful end . . . remain eligible for patent protection" ). In practice, the Director says that this means that ‘if the claim integrates the exception into a practical application, then the claim is not ‘directed to’ the prohibited matter[, ] passes 101 and the eligibility analysis would conclude.’"
"Iancu suggests that in addition to laws of nature and natural phenomena, which are fairly clear and relatively easy to understand, that “abstract ideas” be more clearly defined. For example, he proposes three categories of ineligible ideas based on Supreme Court precedent: (1) mathematical formulas and calculations; (2) methods of organizing human interactions, like fundamental economic practices and marketing/sales activities; and (3) mental processes, such as evaluating and judging."
New Guidance Coming from the USPTO on Patent Eligibility? | Fredrikson & Byron
Oct. 11, 2018: “Questions 2 and 3 clarify the first part of the Mayo/Alice test, and question 4 is identical to the second part of the Mayo/Alice test.
According to Director Iancu, using these four questions to determine whether a claimed invention fits into a patent-eligible category leaves §§ 102, 103, and 112 to determine whether a claim meets the conditions for patentability:
“If something is not inventive, then invalidate it under 102 or 103. If something is indefinite, or too broad to be fully enabled or described, then invalidate it under 112.
Keep an eye out for new guidance from the USPTO on patent eligibility under § 101. Director Iancu’s categories vs. conditions distinction could bring helpful clarity to a confusing area of patent law.”