Patent Office Publishes Relaxed Interim Guidelines for Determining Patent Eligible Subject Matter

December 16, 2014

By: Mary K. Murray, Ph.D. and N. Scott Pierce

Hamilton Brook Smith Reynolds Alert

  • Only product and process claims that are "directed to" laws of nature, natural phenomena or abstract ideas will be subject to further analysis under the new interim guidelines.

 

The U.S. Patent and Trademark Office ("Patent Office") has published interim examination guidelines for use by Examiners in determining statutory eligibility of subject matter. The interim guidelines supplement those published in June, and supersede guidelines that were published this past March.

The newly proposed guidelines are more relaxed in that they apply to process and product claims "directed to" any of the three categories of judicial exceptions to statutory subject matter, namely laws of nature, natural phenomena, and abstract ideas. Earlier guidelines applied to any claim merely "involving" such an exception. According to the new interim guidelines, claims are "directed to" a proscribed judicial exception to patent eligibility when "no markedly different characteristics are shown."

The Patent Office relied on the U.S. Supreme Court to state that a claim "directed to" any of the judicial exceptions "requires closer scrutiny for eligibility because of the risk that [the claim] will 'tie up' the excepted subject matter and pre-empt others from using the law of nature, natural phenomena, or abstract idea." The Patent Office emphasized the need "to understand what the applicant has invented and is seeking to patent" because most inventions, as recognized by the courts, "embody, use, reflect, rest upon, or apply a law of nature, natural phenomena, or abstract idea."

Only claims that are "directed to" laws of nature, natural phenomena or abstract ideas will be analyzed to determine whether they have "additional elements that amount to significantly more than the judicial exception." If so, then the guidelines indicate that the claim is eligible subject matter under United States patent law.

Like the prior guidelines, no bright line for what is "markedly different" or "significantly more" is given, and examples from recent case law are employed only for the purposes of illustration.

The Patent Office has reserved the right to further amend the guidelines in view of pending cases by the Court of Appeals for the Federal Circuit.

The public has been given ninety days to provide comments on these new interim guidelines.

Overview

December 16, 2014

By: Mary K. Murray, Ph.D. and N. Scott Pierce

Hamilton Brook Smith Reynolds Alert

  • Only product and process claims that are "directed to" laws of nature, natural phenomena or abstract ideas will be subject to further analysis under the new interim guidelines.

 

The U.S. Patent and Trademark Office ("Patent Office") has published interim examination guidelines for use by Examiners in determining statutory eligibility of subject matter. The interim guidelines supplement those published in June, and supersede guidelines that were published this past March.

The newly proposed guidelines are more relaxed in that they apply to process and product claims "directed to" any of the three categories of judicial exceptions to statutory subject matter, namely laws of nature, natural phenomena, and abstract ideas. Earlier guidelines applied to any claim merely "involving" such an exception. According to the new interim guidelines, claims are "directed to" a proscribed judicial exception to patent eligibility when "no markedly different characteristics are shown."

The Patent Office relied on the U.S. Supreme Court to state that a claim "directed to" any of the judicial exceptions "requires closer scrutiny for eligibility because of the risk that [the claim] will 'tie up' the excepted subject matter and pre-empt others from using the law of nature, natural phenomena, or abstract idea." The Patent Office emphasized the need "to understand what the applicant has invented and is seeking to patent" because most inventions, as recognized by the courts, "embody, use, reflect, rest upon, or apply a law of nature, natural phenomena, or abstract idea."

Only claims that are "directed to" laws of nature, natural phenomena or abstract ideas will be analyzed to determine whether they have "additional elements that amount to significantly more than the judicial exception." If so, then the guidelines indicate that the claim is eligible subject matter under United States patent law.

Like the prior guidelines, no bright line for what is "markedly different" or "significantly more" is given, and examples from recent case law are employed only for the purposes of illustration.

The Patent Office has reserved the right to further amend the guidelines in view of pending cases by the Court of Appeals for the Federal Circuit.

The public has been given ninety days to provide comments on these new interim guidelines.

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