On January 4, 2019, the USPTO announced revised examination guidelines on Sections 101 and 112, evaluating subject matter eligibility and application of Section 112 to computer-implemented inventions, respectively. The guidelines go into effect on Jan. 7, 2019.
Under the guidelines, examiners are instructed to determine whether a patent claim is directed to a judicial exception under the first step of the U.S. Supreme Court's Alice/Mayo test and whether the abstract idea can be grouped as mathematical concepts, certain methods of organizing human activity, or mental processes. Examiners are to determine whether a claim recites a judicial exception and if the exception is integrated into a practical application. A claim that meets these conditions will be determined to be not directed to a judicial exception. On the other hand, a claim that recites a judicial exception, but is not integrated into a practical application, will be evaluated for inventive concept (Step 2B) to determine subject matter eligibility.
The abstract idea grouping includes: (1) mathematical concepts--mathematical relationships, mathematical formulas/equations, mathematical calculations; (2) certain methods of organizing human activity--fundamental economic principles or practices (hedging, insurance, mitigating risk), commercial or legal interactions (agreements in the form of contracts, legal obligations, advertising, marketing/sales activities/behaviors, business relations), managing personal behavior/relationships/interactions between people (social activities, teaching, following rules/instructions); (3) mental processes--concepts performed in human mind (observation, evaluation, judgment, opinion)
The practical application may be shown as: (1) an improvement in the functioning of a computer or improvement to other technology or technical field; (2) effect a particular treatment or prophylaxis for a disease or medical condition; (3) implements a judicial exception in conjunction with a particular machine or manufacture that is integral to claim; (4) effects a transformation or reduction of particular article to a different state or thing; and (5) applies or uses the judicial exception in some other meaningful way beyond linking the use of the judicial exception to a particular technological environment.
The Section 112 guidance emphasizes various issues with regard to 112 analysis as it relates to computer-implemented inventions. Specifically, it addresses 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).
Full texts of the guidelines are available here--Section 101, Section 112
Under the guidelines, examiners are instructed to determine whether a patent claim is directed to a judicial exception under the first step of the U.S. Supreme Court's Alice/Mayo test and whether the abstract idea can be grouped as mathematical concepts, certain methods of organizing human activity, or mental processes. Examiners are to determine whether a claim recites a judicial exception and if the exception is integrated into a practical application. A claim that meets these conditions will be determined to be not directed to a judicial exception. On the other hand, a claim that recites a judicial exception, but is not integrated into a practical application, will be evaluated for inventive concept (Step 2B) to determine subject matter eligibility.
The abstract idea grouping includes: (1) mathematical concepts--mathematical relationships, mathematical formulas/equations, mathematical calculations; (2) certain methods of organizing human activity--fundamental economic principles or practices (hedging, insurance, mitigating risk), commercial or legal interactions (agreements in the form of contracts, legal obligations, advertising, marketing/sales activities/behaviors, business relations), managing personal behavior/relationships/interactions between people (social activities, teaching, following rules/instructions); (3) mental processes--concepts performed in human mind (observation, evaluation, judgment, opinion)
The practical application may be shown as: (1) an improvement in the functioning of a computer or improvement to other technology or technical field; (2) effect a particular treatment or prophylaxis for a disease or medical condition; (3) implements a judicial exception in conjunction with a particular machine or manufacture that is integral to claim; (4) effects a transformation or reduction of particular article to a different state or thing; and (5) applies or uses the judicial exception in some other meaningful way beyond linking the use of the judicial exception to a particular technological environment.
The Section 112 guidance emphasizes various issues with regard to 112 analysis as it relates to computer-implemented inventions. Specifically, it addresses 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).
Full texts of the guidelines are available here--Section 101, Section 112
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