USPTO Issues New Guidance on § 101 Subject Matter Eligibility

On December 16, the United States Patent and Trademark Office issued new interim examination guidance for evaluating subject matter eligibility under 35 U.S.C. § 101. This guidance, entitled the “2014 Interim Guidance on Patent Subject Matter Eligibility” (“Interim Guidance”), was developed in view of the recent Supreme Court decisions in Alice, Myriad, and Mayo. The Interim Guidance supplements the June 25, 2014 Preliminary Examination Instructions that we previously discussed, and supercedes the March 4, 2014 Guidance following Myriad and Mayo.

The Interim Guidance pares down the scope of subject matter that could be found patent ineligible under the March 4 Guidance. For example, the Interim Guidance notes that “the application of the overall analysis is based on the claims directed to judicial exceptions . . . rather than claims merely ‘involving’ an exception.” With regards to claims directed to natural-based products, markedly different characteristics from what exists in nature, can now include functional characteristics, or other non-structural properties. By comparison, the March 4 Guidance indicated that only structural changes would be sufficient to demonstrate a markedly different characteristic. On a whole, therefore, the Interim Guidance is more “patent claim friendly” than the March 4 Guidance.

To better illustrate the analysis set for in the Interim Guidance, the USPTO has developed claim examples. Claim examples relating to nature-based products are currently available, and the USPTO will be releasing examples relating to abstract ideas in the near future.

The USPTO is seeking public feedback in order to further refine its examination guidance. Comments are due by March 16, 2015. The USPTO will also be hosting a public outreach forum in its Alexandria office on January 21, 2015. Details regarding providing feedback or attending the outreach forum can be found on the USPTO website.

We will continue to monitor and report on developments concerning examination guidance. If you have any questions regarding this Interim Guidance, please contact the Gibbons P.C. Intellectual Property Department.

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