Saving patent eligibility

patent eligibility
USPTO attempting to fix legal confusion

The 2019 USPTO revised patent subject matter eligibility guidance attempts to bring some coherence and consistency to “Alice” patent eligibility issues.

USPTO director Andrei Iancu recently promised that the USPTO would try to clean up the “Alice” patent eligibility mess.  On January 7, 2019, the USPTO issued the “2019 Revised Patent Subject Matter Eligibility Guidance.” At first glance, this appears to be a promising approach. Hopefully, this 2019 guidance will greatly reduce the number of semi-random 35 USC 101 rejections. Some excerpts are shown below.

Properly applying the Alice/Mayo test in a consistent manner has proven to be difficult, and has caused uncertainty in this area of the law.

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…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…The USPTO, therefore, aims to clarify the analysis…

Under the procedure, if a claim recites a judicial exception (a law of nature, a natural phenomenon, or an abstract idea as grouped in Section I, above), it must then be analyzed to determine whether the recited judicial exception is integrated into a practical application of that exception. A claim is not “directed to” a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception…

If the recited exception is integrated into a practical application of the exception, then the claim is eligible at Prong Two of revised Step 2A. This concludes the eligibility analysis…

Examiners evaluate integration into a practical application by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application… in revised Step 2A examiners should ensure that they give weight to all additional elements, whether or not they are conventional, when evaluating whether a judicial exception has been integrated into a practical application.

It is critical that examiners consider the claim as a whole when evaluating whether the judicial exception is meaningfully limited by integration into a practical application of the exception.

If the claim as a whole integrates the recited tentative abstract idea into a practical application, the claim is not directed to a judicial exception (Step 2A: NO) and is eligible (thus concluding the eligibility analysis).

Almost all patent applications are filed for practical applications. This 2019 guidance makes nearly all practical applications patent eligible.  It also somewhat reframes eligibility more in terms of the original (and in my opinion much better) “preemption” considerations. Hopefully, this will encourage examiners to stop rejecting otherwise good applications on dubious and subjective “not patent eligible” grounds.