Under Dir. Iancu, the USPTO has taken a seemingly broader view of eligibility than the Supreme Court, albeit much narrower than before Bilski, Alice, and Mayo. In January 2019, the PTO published a set of Patent Eligibility Guidance (2019 PEG). On October 17, 2019, the PTO released a new set of revisions based upon public comments. “All USPTO personnel are expected to follow the guidance.”

[January 2019 PEG][October 2019 UPDATE]

The January 2019 PEG particularly limits “abstract ideas” to three groupings: Mathematical Concepts; Methods of Organizing Human Activity; and 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” except in “rare circumstance.” Even if a patent claim recites elements within one of these groupings, the 2019 PEG also makes clear that the claim should not be deemed “direct to” an abstract idea under Alice Step 1 if the judicial exception is integrated “into a practical application of that exception.”

The new 22-page “UPDATE” is designed to provide further guidance and updated examples to help examiners. Topics:

(I) What does it mean to “recite a judicial exception?” Answer: “recite” includes implicit “description” in the claim;

See examples 37-46 (II) Can you further define the abstract idea “groupings?” Mathematical concepts include: mathematical-relationships; mathematical formulas or equations; and mathematical calculations

Methods of Organizing Human Behaviour include: Fundamental economic practices or principles; commercial or legal interactions; managing personal behavior or relationships or interactions between people (including playing games);

Mental Processes can include claims that require a computer, but do not include steps that cannot practically be performed in the human mind; pen and paper counts as a mental process. (II) Extended – What if an examiner thinks that a claim recites an abstract idea that doesn’t fit in the grouping? Answer: this must be approved by the TC Director! (III) How to know if the recited judicial exception is integrated into a practical application? (Still under Alice Step 1) Answer: Ask whether the claim recites “additional elements that integrate the judicial exception into a practical application.”

Example: A claim whose “additional limitations reflect an improvement in the functioning of a computer, or an improvement to another technology or technical field.”

In understanding whether a practical technical improvement is claimed, examiners are told to look to the specification for “sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” A patent will likely fail here if the specification recites the practical tech in conclusory form. (IV) How does an examiner establish a prima facie case of ineligibility? Inter alia, Examiners should identify the particular claim limitations that recite an abstract idea and explain its grouping. Examiners need not provide “evidence” beyond an explanation.

[Read it here] We’ll do a series on this over the next several days.