Finnegan
January 2015 Issue

Rule Review

New Subject Matter Eligibility Interim Guidance After Alice, Mayo, and Myriad

Following three years of evolving law under 35 U.S.C. § 101, the U.S Patent and Trademark Office (USPTO) has published comprehensive guidance for assessing patent subject matter eligibility under 35 U.S.C. § 101.  The “2014 Interim Guidance on Patent Subject Matter Eligibility” (Interim Guidance) encompasses the USPTO’s guidance for subject matter eligibility following the Supreme Court’s opinions in Alice Corp. v. CLS Bank International, 134 (2014); Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013); and Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012).  It supplements the June 25, 2014, “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.” and supersedes the March 4, 2014, “Guidance for Determining Subject Matter Eligibility of Claims Reciting or Involving Laws of Nature, Natural Phenomena, and Natural Products” (March 2014 Guidance).1

The Interim Guidance generally follows the organization of MPEP § 2106 and includes a flowchart to assist with the analysis.  Beginning with the two-step analysis for subject matter eligibility identified in MPEP § 2106, the Interim Guidance focuses on applying the two-part Mayo/Alice test for claims directed to laws of nature, natural phenomena, and abstract ideas.2  In addition, the Interim Guidance establishes a streamlined eligibility analysis for certain claims that clearly do not attempt to preempt use of the judicial exception.  The Interim Guidance flowchart, which differs slightly from the flowchart in the March 2014 Guidance, is reproduced below3:

Step 2A:  Determine Whether the Claim as a Whole Is Directed to a Judicial Exception
After determining that the claim recites statutory subject matter under Step 1, the Interim Guidance instructs examiners to determine whether the examined claim as a whole is directed to a judicial exception.4  This first requires determining what the claim is “directed to.”5  The USPTO defines a claim as directed to a judicial exception if “a law of nature, a natural phenomenon, or an abstract idea is recited (i.e., set forth or described) in the claim.”6    

In most circumstances, a claim directed to a judicial exception will require further analysis under Step 2B of the Mayo/Alice test to determine if it qualifies as eligible subject matter.  According to the Interim Guidance, this closer scrutiny is warranted because there is a risk that a claim directed to a judicial exception may “tie up” the excepted subject matter.7  Like the courts, examiners should “tread carefully” when considering these types of claims “because at some level all inventions embody, use, reflect, rest upon, or apply a law of nature, natural phenomenon, or abstract idea.”8  For claims that clearly do not seek to preempt use of the judicial exception, the Interim Guidance provides a streamlined eligibility analysis that sidesteps the Mayo/Alice test, discussed below.9  This includes nature-based products that clearly do not seek to preempt the judicial exception, which may bypass the “markedly different characteristics” analysis normally required by the Interim Guidance.10 

The Interim Guidance broadened the “markedly different characteristics” analysis of claims that recite nature-based products.  Unlike the March 2014 Guidance’s emphasis on structural differences to satisfy the markedly different analysis, the Interim Guidance recognizes that “[m]arkedly different characteristics can be expressed as the product’s structure, function, and/or other properties.”11

In conjunction with the publication of the Interim Guidance, the USPTO released Nature-Based Product Examples that exemplify the “nature-based products” analysis.  The Examples overlap in part with those in the March 2014 Guidance in addition to presenting and analyzing new examples.  The USPTO is expected to release Abstract Idea Examples soon.

Streamlined Eligibility Analysis
Certain claims that recite a judicial exception but “clearly do not seek to tie up the judicial exception” may bypass the Mayo/Alice test and use a streamlined eligibility analysis.12  According to the USPTO, these claims need not proceed through the standard eligibilty analysis “as their eligibility will be self-evident.”13 

While the Interim Guidance does not provide concrete details on the specific types of claims eligible for the streamlined eligibility analysis, it does provide several examples of claims eligible for this analysis.  These examples are:

Step 2B:  Determine Whether the Claim Recites Significantly More Than the Judicial Exception
Once the examiner determines that the claim is directed to a judicial exception, the claim must be analyzed to determine if the elements of the claim “amount[] to significantly more than the exception itself.”15  This search for inventive concept in the claim proceeds by considering the elements individually and in ordered combination.16  Requiring the claims to recite “significantly more” ensures that the claim describes a process or product that “applies the exception in a meaningful way.”17 

The Interim Guidance provides several examples of claim limitations that “may be enough to qualify as ‘significantly more’ when recited in a claim with a judicial exception” in Sections I.B.1 and III.18  For example, the Interim Guidance identifies adding a specific limitation other than what is well understood, routine, and conventional in the field as a type of limitation that may meet the “significantly more” requirement.19  On the other hand, generally linking the use of the judicial exception to a particular technological environment or field of use was found not to qualify as “significantly more.”20    

Although the Interim Guidance does not specifically identify it as such, the Federal Circuit’s recent opinion in DRR Holdings, LLC v. Hotels.com, L.P., No. 2013-1505 (Fed. Cir. Dec. 5, 2014), is the first example after Alice where software-based claims satisfied the “significantly more” requirement of Step 2B.21  The claims at issue in DDR Holdings provide a solution to retaining website visitors on a host’s website after visitors activate an advertiser’s hyperlink.22  Without more than a summary of the Federal Circuit’s holding in DDR Holdings, the Interim Guidance provides little actual guidance to what makes software-based claims directed to an abstract idea patent eligible.23  Perhaps the USPTO will address how the claims in DDR Holdings satisfied Step 2B where the claims in Alice and its progeny failed when it releases the forthcoming Abstract Ideas Examples.

As with the March 2014 Guidance, the Interim Guidance took effect immediately upon publication on December 16, 2014, and applies to all applications filed before, on, or after that date.  The Interim Guidance has already started to impact the examination of applications for examiners and patent applicants.  The USPTO is seeking public comment on the Interim Guidance and anticipates that the examination guidance will periodically be supplemented based on developing jurisprudence and public comment.  More information about the Interim Guidance is available at the USPTO’s Examination Guidance and Training Materials page, and a summary of this Interim Guidance is available in a 2014 Interim Eligibility Quick Reference Sheet.

 

1 79 Fed. Reg. 74,619 (Dec. 16, 2014).

2 Id. at 74,621-22.

3 Id. at 74,621.

4 Id. at 74,622. 

5 Id. 

6 Id. (emphasis added).

7 Id. 

8 Id. 

9 Id. 

10 Id. at 74,623.

11 Id. (emphases added).

12 Id. at 74,622, 74,625. 

13 Id. at 74,625. 

14 Id.

15 Id. at 74,624. 

16 Id. 

17 Id.

18 Id. 

19 Id. 

20 Id.

21 Id. at 74,632; DRR Holdings, No. 2013-1505, slip op. at 19-20.

22 79 Fed. Reg. at 74,632.

23 Id.



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