USPTO issues patent eligibility update
The US Patent and Trademark Office (USPTO) last week released an update to its 2019 patent eligibility guidance (PEG), which was initially published in January this year.
The 2019 PEG issued new instructions to patent examiners on how to apply the US Supreme Court’s Alice/Mayo test, which determines whether a patent is directed towards ineligible subject matter such as an “abstract idea”.
According to the USPTO, the latest update “does not change the 2019 PEG, but provides further explanation on how the USPTO applies such guidance”.
For example, the office said, the updated guidance seeks to provide greater clarity on how an examiner should determine whether a patent is directed towards an abstract idea.
The October update includes four new examples of hypothetical life sciences-related patent applications and how the Alice/Mayo test would be applied in those cases.
It also includes further information on how to evaluate whether a patent claim recites a judicial exception.
Daniel Rose, senior counsel at Foley & Lardner, said: “In particular, ‘recite’ as used in the guidance means ‘sets forth’ or ‘describes’, but does not require the claim to explicitly recite the exception – for example, the claims at issue in Alice v CLS Bank described the ineligible concept of intermediated settlement [mitigating the risk that one party to an agreed transaction fails to pay or to satisfy other conditions], without ever using that term.”
The update provides additional explanation of the “groupings” of abstract ideas outlined in the 2019 PEG, including ‘mathematical concepts’ and ‘methods of organising human activity’.
Rose added that the guidance suggests that the “mathematical concepts” category may include claims that recite steps of “determining a variable or number using mathematical methods”, which may arguably apply to any computer-implemented method.
He said: “However, the updated guidance does distinguish between ineligible claims that are directed to a mathematical concept from eligible claims that are merely based on or involve such concepts, but are directed to other technological inventions. It remains to be seen how broadly examiners will apply this category in view of the updated guidance.”
A new chart of subject matter eligibility court decisions was also provided to examiners and the public as part of the updated material.
The USPTO said the updated guidance was based on comments it received during a public consultation period after the publication of the PEG.
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