USPTO Releases Updated §101 Guidance

On January 7, the USPTO released “2019 Revised Patent Subject Matter Eligibility Guidance” that makes significant changes to how USPTO examiners and other personnel are to apply the first step of the Alice analysis (USPTO Step 2A), which determines whether a claim is “directed to” an abstract idea.  This new guidance supersedes all prior guidance and is immediately applicable to all applications filed before, on, or after today.  In brief summary, the revised guidance divides the Step 2A analysis into two prongs.

Under the first prong of Step 2A, the USPTO limits the categories of subject matter that will be considered to be an abstract idea to: “mathematical concepts,” “certain methods of organizing human activity,” and “mental processes.”  Under the first prong analysis, with rare exception, a claim that does not recite subject matter within one of these three categories will be patent-eligible because it is not directed to an abstract idea under the Step 2A analysis.

Under the second prong of Step 2A, when a claim recites subject matter within one of the three enumerated abstract idea categories, the claim as a whole must be analyzed to determine whether the recited abstract idea is “integrated into a practical application” of the abstract idea.  If the recited abstract idea is “integrated into a practical application” of the abstract idea, the claim is not “directed” to the abstract idea, and thus is patent-eligible under Step 2A.  Only when the recited abstract idea is not “integrated into a practical application” of the abstract idea, will the analysis proceed to Step 2B.

The revised Step 2A framework also apples to claims reciting “laws of nature” and “natural phenomena.” However, the USPTO has not narrowed the type of subject matter that falls within these categories.