Bennett Jones
The United States Patent and Trademark Office has published its 2014 Interim Eligibility Guidance of Subject Matter Eligibility for use by USPTO personnel in determining subject matter eligibility under 35 U.S.C. 101 of the United States Patent Act, which we wrote about here. The Guidance does not have the force and effect of law but rather, sets out the USPTO's interpretation of the subject matter eligibility requirements in light of recent decisions by the United States Supreme Court and the United States Court of Appeals for the Federal Circuit.
The most significant parts of the Guidance includes a decision-making flowchart which asks:
- Is the claim "directed to" one of the four statutory categories - a process, machine, manufacture and composition of matter?
- Is the claim "directed to" a judicial exception - a law of nature, a natural phenomenon, and an abstract idea?
- Does the claim recite additional elements that amount to "significantly more" than the judicial exception?
Limitations that may be enough to qualify as significantly more when recited in a claim with a judicial exception include: improvements to another technology or technical field, improvements to the functioning of the computer itself, applying the judicial exception with, or by use of, a particular machine, effecting a transformation or reduction of a particular article to a different state or thing, adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application, or other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
Limitations that may not to be enough to qualify as significantly more when recited in a claim with a judicial exception include: adding the words apply it with the judicial exception, or mere instructions to implement an abstract idea on a computer, simply appending well-understood, routine and conventional activities previously known to the industry, adding insignificant extrasolution activity to the judicial exception, or generally linking the use of the judicial exception to a particular technological environment or field of use.
If there are no meaningful limitations in the claim that transform the exception into a patent-eligible application, such that the claim does not amount to significantly more than the exception itself, the claim is not patent-eligible and should be rejected under 35 U.S.C. 101.
The Guidance is effective as of December 16, 2014, and applies to all patent applications filed before, on, or after that date. Public comment is invited and must be received on or before March 16, 2015.