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November 2019

U.S. Patent and Trademark Office Issues Updated Guidance on Subject Matter Eligibility

35 U.S.C. §101 defines the type of subject matter that is eligible for patenting. The Supreme Court’s interpretation of §101 in Alice has made computer related and business method inventions more difficult to patent, as courts are increasingly finding such inventions to be directed towards patent ineligible abstract ideas in view of Alice. Application of Alice has proven to be challenging to both the U.S. Patent and Trademark Office (“USPTO”) and federal courts, resulting in inconsistency and unpredictability in evaluating inventions under the Alice test. In order to provide more clarity and predictability in evaluating patent eligibility, the USPTO issued the 2019 Revised Patent Subject Matter Eligibility Guidelines (“2019 PEG”) on January 7, 2019. The USPTO has now issued the October 2019 Update on Subject Matter Eligibility (“October 2019 Update”), addressing concerns raised in view of the 2019 PEG.

The October 2019 Update provides further clarity on how to avoid or overcome patent eligibility issues while preparing and prosecuting patent applications. In particular, the October 2019 Update clarifies what concepts recite patent ineligible subject matter. For instance, one such patent ineligible concept is a mental process. The October 2019 Update now explicitly clarifies that an invention that cannot practically be performed in the human mind does not recite a mental process.

Although reciting a patent ineligible concept, an invention may still be patentable if it is directed to a practical application such as an improvement to a computer or other technology. The October 2019 Update directs patent examiners to evaluate inventions for such an improvement by reviewing the patent application to determine if the improvement is described in the patent application in sufficient detail.

The October 2019 Update provides insight into how an invention should be described and claimed in a patent application. Accordingly, the October 2019 Update emphasizes the importance of a well drafted patent application so that the described invention has the greatest chance of satisfying the subject matter eligibility requirements.

If you would like to discuss the impact of the October 2019 Update, or discuss any other intellectual property concerns you may have, please contact one of the following attorneys.

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