By Jason Rantanen
This morning, the USPTO issued a substantial update to its December 2014 “Interim Guidance” on patent subject matter eligibility. The update addresses comments on the 2014 Guidance and includes several new examples of eligible and ineligible claims. The update is available here: http://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0 (The title says 2014 Interim Guidance, but the contents include the 2015 update.)
The new examples are directed to abstract ideas rather than biotechnology based inventions, although the commentary notes that the office is working on additional biotech-based examples. According to the update,
These examples provide additional eligible claims in various technologies, as well as sample analyses applying the Supreme Court and Federal Circuit’s considerations for determining whether a claim with additional elements amounts to significantly more than the judicialexception itself. The examples, along with the case law precedent identified in the training materials as pertinent to the considerations,3 will assist examiners in evaluating claim elements that can lead to eligibility (i.e., by amounting to significantly more) in a consistent manner across the corps.
While these examples will likely be welcomed by attorneys practicing in this area, a substantial limitation is that the only recent Federal Circuit opinion finding an abstract idea-based claim eligible is DDR Holdings v. Hotels.com. Thus, while there are several other examples of claims that the PTO would find eligible, those examples are based on either (1) PTO (as opposed to Federal Circuit) precedent; (2) hypothetical situations; or (3) pre-Mayo/Alice decisions (such as Diamond v. Diehr).
A particularly interesting part of the examples are two directed to use of the “streamlined” patent eligible subject matter analysis. Those examples analyze claims directed to an internal combustion engine and remote storage of BIOS. For these claims, the examiner would conduct only a “streamlined” analysis that would not become part of a written rejection.
As with the earlier Interim Guidance, the PTO is seeking public feedback on the update. From the website:
Any member of the public may submit written comments by electronic mail message over the Internet addressed to email@example.com (link sends e-mail). Electronic comments submitted in plain text are preferred, but also may be submitted in ADOBE® portable document format or MICROSOFT WORD® format. The comments will be available for public inspection here at this Web page. Because comments will be available for public inspection, information that is not desired to be made public, such as an address or a phone number, should not be included in the comments. Comments will be accepted until October 28, 2015.