USPTO Revises Patentable Subject Matter Guidelines to Start 2019

January 7, 2019
Bereskin & Parr LLP

Wasting no time in 2019, the United States Patent and Trademark Office (USPTO) has announced revised guidelines for its examining corps, set to take effect January 7, 2019. The revised guidance changes the way in which patent examiners will determine whether the claims of a patent application are eligible to be patented. In particular, the revised guidance should result in fewer subject matter objections being issued and should reduce the cost of prosecuting US patents for computer-implemented inventions. However, patent applications for some business methods and other processes that can be implemented by humans without the use of a computer system will continue to face a steep uphill climb in the USPTO.

Existing guidance is based on the 2013 decision of the U.S. Supreme Court in Alice Corp. v. CLS Bank International. In the Alice decision, the Court held that a two-pronged test should be used to evaluate whether the claims of a patent application are directed to patent-eligible subject matter. In the first prong, examiners are to determine whether a claim is directed to an excluded concept, such as an abstract idea, natural phenomenon or law of nature. If yes, then examiners must evaluate whether the claim contains “significantly more” than the excluded concept.

The revised guidance changes how USPTO examiners will conduct the first prong of the Alice analysis. Previously, examiners were instructed to consider only whether the abstract idea (or other exception) was “recited” (i.e., contained) in the claim; if the abstract idea was present, the analysis immediately shifted to the second prong. Under the revised guidance, the mere presence of an abstract idea will not be determinative on its own. Rather, examiners are instructed to consider whether the abstract idea is “integrated into a practical application”. Integration into a practical application means that an invention will “apply, rely on, or use the [abstract idea] in a manner that imposes a meaningful limit on the [abstract idea], such that the claim is more than a drafting effort designed to monopolize the [abstract idea].“ If the abstract idea is integrated into a practical application, then the claim will be eligible under the first prong of the analysis, and there will be no need to proceed to the second prong of the analysis.

The revised guidelines also define the categories of abstract ideas more narrowly, with only three groupings to be used: mathematical concepts, methods of organizing human activity, and mental processes. Examiners are instructed that any claim that does not fit within these categories should not be treated as directed to an abstract idea, except in rare circumstances.

Although the revised guidance does not constitute substantive rulemaking and does not have the force and effect of law, it should nevertheless be welcome news for applicants, and should provide increased certainty for patent stakeholders.

The USPTO hints in its announcement that the new guidelines flow from the evolution of case law in the United States, as courts have dealt with numerous matters since the Alice decision. Unfortunately, the issue of patentable subject matter has seen considerably less attention in Canadian courts. As a result, examination guidelines for Canadian examiners continue to be based on the Canadian Intellectual Property Office’s interpretation of the 2011 ruling in Canada (Attorney General) v Inc.


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