by Dennis Crouch
The USPTO has released pair of examiner guidance documents for (1) examination of patent eligibility and (2) examination for definiteness of functional claim limitations (with a focus on software patents).
- 2019 Eligibility Guidance focusing Primarily but Not Exclusively on Abstract Idea analysis
- 2019 Definiteness Guidance for Functional Limitations in Software Patents
Although these guides do not have the force of law, they are quite important because they direct the bureaucratic process — telling examiners how to examine patent applications for these issues. Examiner performance will be adjudged based upon their ability to comply with the guidance. In general, I would expect that examiners will be more quickly swayed by citations to the guidelines rather than to citations to particular court decisions. Examiners will be trained in the upcoming weeks and training materials will be available at the PTO website.
Here, I will focus on the eligibility guidelines and leave definiteness for a separate post.
Prior iterations of eligibility guidelines focused on a listing of post-Alice cases as examples for examiners to follow. Examiners are typically not attorneys and are not expected to read cases — that makes this case-focused approach problematic in the long-term. In the new 2019 iteration, the PTO has attempted to synthesize case law in a way that is practical for examiners. The PTO is also suggesting that this approach will be more reliable and more predictable. The USPTO does not have the power to shift the legal definition of eligibility. However, the Agency is given discretionary authority to design a practical administrative mechanism for implementing the law as given. That is how I see the PTO’s approach here. Now lets look at two of the important changes from prior guidance documents: .
Categories of Abstract Ideas: The inquiry of Alice/Mayo Step 1 is whether the patent claim is “directed to” an “abstract idea” or other excluded area. The first important guidance change here is to create three of categories or “groupings” of abstract ideas:
- Mathematical Concepts
- Methods of Organizing Human Activity
- Mental Processes
Under the guidance, claims that do not recite matter within one of these three groups “should not [ordinarily] be treated as reciting abstract ideas.” The guidance does note a “rare circumstance” where an abstract idea might fall outside these categories. While this approach does not settle the ongoing question of what counts as abstract, it does go a long way toward helping examiners decide when to reject claims.
“Directed To” an Ineligible Concept: The PTO guidance has also focused-in on the Supreme Court’s “directed to” requirement that finds claims problematic only if “directed to” the ineligible concept. For that element, the PTO asks examiners to consider whether the ineligible concept is “integrated into a practical application.”
A claim is not “directed to” a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception.
The guidance for analyzing this issue focuses on whether keywords of whether the claim uses the ineligible subject matter in a way “that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.”
Although the document is written primarily as examiner guidance, it is also being applied to PTAB judges and is being seen as a statement of PTO policy.