7 January 2019

USPTO issues new guidelines on Alice/Mayo implementation

The US Patent and Trademark Office (USPTO) has published new guidelines on the eligibility of subject matter in patent applications.

The guidelines, issued on Friday, January 4, revised the instructions to patent examiners for how they should apply the first step of the US Supreme Court’s Alice/Mayo test.

Devised in the wake of the court’s 2012 Mayo v Prometheus and 2014 Alice v CLS Bank rulings, the test set out guidelines for determining whether an invention is patent-eligible.

The USPTO’s new guidelines have revised the implementation of the first step of Alice/Mayo, which determines whether the claims at issue are “directed to” a patent-ineligible concept.

In the Alice decision, the court reiterated its position that “laws of nature, natural phenomena, and abstract ideas are not patentable”.

Explaining the need for new guidelines, the USPTO said that “many stakeholders, judges, inventors, and practitioners across the spectrum have argued that something needs to be done to increase clarity and consistency in how” the test is applied.

In the guidelines, the USPTO specified three categories of “abstract ideas” which should be considered ineligible: mathematical ideas, certain methods of organising human activity, and mental processes. Claims outside of these groupings “should not be treated as reciting abstract ideas”, the guidelines said.

The USPTO further clarified that a patent directed towards an abstract idea, or “judicial exception”, is still eligible if integrated into a practical application. A patent claim may still be considered eligible if it “recites an abstract idea, law of nature, or natural phenomenon” to improve the functioning of a computer or another technological device.

Patent claims which simply implement abstract ideas using computers or technology do not qualify as a practical application of the idea, the guidelines said.

Gene Quinn, founder of IPWatchdog, said in a post that “the USPTO is effectively defining what is and what is not an abstract idea, thereby filling a void intentionally left ambiguous by both the Supreme Court and the Federal Circuit”.

Andrei Iancu, under secretary of commerce for IP and director of the USPTO, said in a statement that the new guidelines would “improve the clarity, consistency, and predictability of actions across the USPTO”.

The new guidelines come into effect today, January 7.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.

Today's top stories:

Wagamama wins TM dispute against ‘Wakayama’ instant noodles

FTC v Qualcomm trial begins

SCOTUS to rule on ‘scandalous’ trademarks’ registration

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at

More on this story

14 January 2020   The US Supreme Court has declined to revisit the issue of patent subject matter eligibility, a move that one lawyer called “bad for the health of Americans and bad for our economy”.
11 May 2020   The question of what is and isn’t patentable is fundamental to the running of a functional IP system. So fundamental that, looking back on the past decade in US patent law, it’s remarkable the extent to which this has been contested and shrouded in uncertainty.
12 May 2021   A targeted TV ad patent owned by Samba TV is invalid according to the US Supreme Court’s landmark ruling in Alice v CLS Bank International, the US Court of Appeals for the Federal Circuit has found.