Andrei Iancu, director of the United States Patent and Trademark Office (USPTO), continues to steer the USPTO on a more pro-patent path with new Examination Guidance released for public comment on January 4, 2019. The Guidance refines how examiners should apply Alice Corp.’s two-part test to determine subject matter eligibility going forward and provides a concise reference to help practitioners avoid pitfalls in drafting and prosecuting computer-related or software-implemented inventions.
The Examination Guidance relates to subject matter eligibility under 35 U.S.C. §101 and to the application of 35 U.S.C. §112 to computer-implemented inventions. The Guidance attempts to clarify and provide uniformity in the examination procedure for certain classes of invention that are alleged to include “abstract ideas” in light of the increasingly complex landscape created by case law in the wake of the decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217-18 (2014).
In the existing step 2A of the two-part test for determining subject matter eligibility, the examiner must determine, for certain inventions, whether the claim is “directed to” an “abstract idea” in violation of 35 U.S.C. § 101. The Guidance splits the existing step 2A analysis into a two-prong inquiry. In the first prong, the Guidance indicates that the examiner should evaluate whether the claim recites a judicial exception. The Guidance indicates that (with rare exceptions) abstract ideas must fall into one of three enumerated categories: mathematical concepts, certain methods of organizing human activity, and purely mental processes. By limiting the definition of abstract idea to certain enumerated categories, the Guidance curtails application of the “abstract” label by examiners to broad ranges of claimed subject matter and forces examiners to support rejections by showing how the claimed subject matter fits into one of the three categories.
The Guidance also outlines a second prong of the step 2A analysis that indicates that inventions that recite a judicial exception are not “directed to” the judicial exception if the claim as a whole integrates the judicial exception into a practical application of the judicial exception. Examples indicating that the judicial exception has been integrated into a practical application can include an improvement in the functioning of a computer or other technology, implementation or use of the judicial exception in conjunction with a particular machine or manufacture that is integral to the claim, or use of the judicial exception to transform or reduce a particular article to a different state or thing. Only if the judicial exception is not integrated into a practical application of the judicial exception will further analysis be performed under step 2B of the Alice Corp. framework. Of note, the revised step 2A does not consider whether additional elements are well-understood, routine or conventional activities and reminds examiners that conventional elements may still integrate an exception into a practical application. Previously, the mere inclusion of a judicial exception in the claim was cited by examiners as sufficient grounds to reject the whole claim. Additionally, the Guidance also reminds examiners that, under the step 2B analysis, claims reciting abstract ideas that are not integrated into a practical application may still be patentable if the claim elements individually or in combination provide an inventive concept such as adding an element or combination of elements that are not well-understood, routine, conventional activity in the field.
Rejections under 35 U.S.C. § 101 have been thought to be based upon a public policy of preventing any one party from monopolizing the “basic tools of scientific and technological work” that should be available to all. The Guidance takes a more subtle view, supported by a growing body of decisions from the U.S. Court of Appeals for the Federal Circuit, that integration of a judicial exception into a practical application can “apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception such that the claim is more than a drafting effort to monopolize the judicial exception.” When the claim provides a practical application of, e.g., an abstract idea or law of nature, with meaningful limits on use of the judicial exception, the Guidance indicates that the claim should be held eligible for patenting. In practice, this aspect of the Guidance should provide a strong basis for practitioners to argue against abstract idea rejections, for example, when use of the abstract idea is grounded in a particular implementation of a device.
Enablement and written description issues under Section 112 in the context of computer-implemented inventions often go hand in hand with subject matter eligibility issues, and so it makes sense that the USPTO issued Guidance on both topics simultaneously. The Guidance does not break significant new ground in terms of how examiners are to understand and interpret case law pertaining to issues under Section 112, but it does provide a useful set of reminders to those drafting applications with a significant software component. It is often the case that software inventions are claimed as a series of steps that can appear to involve only functional language without corresponding structure. Importantly, the Guidance reiterates the view that software claims, as with any other type of claim, must be described in the specification not merely in terms of a result to be achieved but rather as definite structure in the form of relevant hardware and algorithms to achieve the claimed functions. Algorithms can be represented in a number of ways, including through flowcharts, equations, or prose, and the Guidance warns applicants that they will not be able to rely upon “knowledge of one skilled in the art” to supply the missing technical information. In practice, practitioners should continue to fully disclose and describe the algorithms “under the hood” of any computer-implemented invention and avoid broad claim language that goes beyond the scope of support found in the specification.