The United States Patent and Trademark Office (USPTO) on January 4, 2019, announced newly revised 35 U.S.C. § 101 guidance for use by USPTO personnel in evaluating subject matter eligibility. The USPTO also announced guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions. Both guidance documents take effect Monday, January 7, 2019.

2019 Revised Patent Subject Matter Eligibility Guidance

The "2019 Revised Patent Subject Matter Eligibility Guidance" makes two primary changes to how patent examiners apply the first step of the U.S. Supreme Court's Alice/Mayo test, which determines whether a claim is "directed to" a judicial exception. The Guidance tells examiners that the abstract idea exception includes mathematical concepts, certain methods of organizing human activity, and mental processes. In addition, examiners are instructed to determine if the claim "recites a judicial exception."  If it does, examiners are to determine if the claim recites additional elements "that integrate the identified judicial exception into a practical application." If both conditions are met, the claim is "directed to" a judicial exception, and further analysis under the second step of the Alice/Mayo test is required.

Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112

The "Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112" guidance emphasizes various issues with regard to § 112 analysis, specifically as it relates to computer-implemented inventions. Specifically, the § 112 Guidance describes proper application of means-plus-function claiming under § 112(f), of the definiteness requirement under § 112(b), and of the written description and enablement requirements under § 112(a).

"These guidance documents aim to improve the clarity, consistency, and predictability of actions across the USPTO," said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu in a press release. "The USPTO will provide training to examiners and administrative patent judges on both documents to ensure that guidance is being properly administered."

 To read the complete text of the Federal Register Notices, click the links below:

Section 101 guidance

Section 112 guidance

 The AIPLA Online Programs Committee is preparing a rapid response limited CLE webinar to address the impact of the guidelines on IP practitioners. Visit the AIPLA Upcoming Webinars webpage after the release of the guidelines for more information.