Practice tips for the USPTO’s 2019 revised subject matter eligibility guidance

New 2019 Revised Patent Subject Matter Eligibility Guidance was issued by the US Patent and Trademark Office (USPTO) on January 4, 2019. The revised guidance presents a substantial shift in the analysis of claims for subject matter eligibility under 35 USC §101. As such, a practitioner drafting a patent application or responding to an office action on a pending application will need to adapt drafting techniques and arguments to fit the new guidance.

Discussed herein are three major changes in the subject matter eligibility analysis, along with proposed practice tips.

The three major issues are changes in identification, categorisation, and application of abstract ideas. First, alleged abstract ideas must be recited as such in the claims. No longer can abstract ideas be created by examiners through summarising or generalising the claims.

“Another significant change is the designation of a two-prong test within step 2A of the Alice/Mayo framework.”

Second, the claim limitation identified as an abstract idea must be evaluated to determine whether the claim limitation is within three enumerated categories. This is called “prong 1 of step 2A”. If the claim limitation is not within one of the categories, the claim is allowable.

Third, if the claim limitation is within one of the categories, the additional elements (those claim limitations beyond the claim limitation identified as an alleged abstract idea) are identified to determine whether the additional elements integrate the abstract idea into a practical application. This is called “prong 2 of step 2A”. If the additional elements integrate the abstract idea into a practical application, the claim is allowable.

Change 1: identification of abstract ideas

A significant change that appears in the 2019 revised guidance is that any abstract idea must be recited as such in the claim. Unlike the old approach, in which the claim could be summarised into an alleged abstract idea, under the new guidance the abstract idea must appear verbatim in the claim. Under the 2019 revised guidance, an examiner must “identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea.” Thus, there is no summarisation of the claims allowed in identifying the abstract idea. Instead, verbatim claim limitations must be considered as either constituting an abstract idea or not.

Practice tips: