07 Jan 2019

In order to improve consistency, the USPTO issues news guidelines for patent subject matter eligibility

Ever since the 2014 Supreme Court of the United States decision in Alice Corp. v. CLS Bank, the USPTO has raised the bar for patent subject matter eligibility in the USA.  Hence, it is more difficult to obtain patents in technology fields which deal with so-called “abstract ideas”.

To this end, the USPTO issued new guidelines (in effect as of January 7, 2019) which could lead to greater certainty for patent applicants.  The two primary changes to the existing guidelines are as follows:

  1. The groups of subject matter that can qualify as “abstract ideas” have been clarified as including: mathematical concepts, certain methods of organizing human activity, and mental processes (i.e., judicial exceptions); and
  2. A claim that includes a judicial exception (such as “abstract ideas”), but that integrates the identified judicial exception into a practical application, will be viewed as not being “directed to” the judicial exception, and will therefore be considered eligible subject matter.

The complete text of the guidelines can be found here.

If you have questions on the guidelines, please contact one of our professionals.

Phil Conrad and C. Marc Benoît

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