In January 2019, the United States Patent and Trademark Office (USPTO) updated their guidance for determining patent subject matter eligibility under 35 U.S.C 101 and computer-implemented functional claim limitations under 35 U.S.C. 112. With these updates, the USPTO seeks to provide clarity on subject matter eligibility and on claims that contain functional language, particularly computer-implemented inventions.

Updated Guidance on 35 U.S.C. 101

Previously, the USPTO used the Alice/Mayo test, also known as a two-step test, to determine patent subject matter eligibility. This was a test used to analyze whether a claim is directed towards matter excluded from subject matter eligibility based on “judicial exceptions” to what is eligible – these include laws of nature, natural phenomena, and abstract ideas. If the claim does not fall under a judicial exception in step 1, then step 2 is used to analyze whether the claim contains an “inventive concept.” It seemed that a proper application of the Alice/Mayo test in a consistent and reliable manner has been difficult, and as a result, patent stakeholders were at times unable to reliably determine whether a particular invention could be patent eligible.  This revised guidance aims to address the concerns of stakeholders, judges, inventors, and practitioners who have felt the need for a clearer and more consistent manner of applying 35 U.S.C. 101.

The USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance now updates, in two ways, the procedures for determining whether a patent claim or patent application claim is directed to a judicial exception under Step 2A of the Alice/Mayo test. The first update is that it is explained that abstract ideas can be grouped, such as in the following examples: mathematical concepts, certain methods of organizing human activity, and mental processes. Second, it is explained that a patent claim or patent application claim that recites a judicial exception is not necessarily directed to the judicial exception if the judicial exception is integrated into a practical application of that judicial application. On the other hand, a claim that recites a judicial exception without integrating that judicial exception into a practical application is still directed towards that judicial exception under Step 2A of the test. Then, the claim must be evaluated under Step 2B (as discussed above, the “inventive concept”) to fully determine the subject matter eligibility of the claim.

Updated Guidance on 35 U.S.C. 112

As noted by the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”), there seemed to be a rising issue of broad functioning claiming without proper structural support in the specification. As described in the Federal Register (cited below):

“Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (overruling the Federal Circuit’s previous application of a ‘‘strong’’ presumption that claim limitations lacking the word ‘‘means’’ are not subject to § 112(f) to address the resulting ‘‘proliferation of functional claiming untethered to [§ 112(f)] and free of the strictures set forth in the statute’’); Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1319 (Fed. Cir. 2013) (‘‘ ‘Section [112(f)] is intended to prevent . . . pure functional claiming.’ ’’ (citing Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1238, 1333 (Fed. Cir. 2008))); Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010) (en banc) (discussing the problem of functional claims defining a genus that ‘‘simply claim a desired result . . . without describing species that achieve that result’’).”

The Federal Circuit acknowledged that in light of some of its prior opinions, “a heightened bar” was established, in “overcoming the presumption that a limitation expressed in functional language without using the word ‘‘means’’ is not subject to 35 U.S.C. 112(f) and concluded that such a heightened burden is unjustified.” The Revised Guidance seeks to address these issues when analyzing a claim under 35 U.S.C. 112.

The Guidance for 35 U.S.C. 112 first outlines the process for claim interpretation, including determining whether a claim should be interpreted as a means-plus-function claim under section 112(f). Next, the guidance discusses indefiniteness under 35 U.S.C. 112(b). For a computer-implemented claim invoking 35 U.S.C. 112(f), the specification should disclose an algorithm for performing the claimed specific computer function. This can be, as examples, “a mathematical formula, prose or flow chart or in any other manner that provides sufficient structure.” Otherwise, the claim is indefinite under 35 U.S.C. 112(b). The Guidance also reviews the requirements for enablement and written description, and in particular, states that “a specification must describe the claimed invention in sufficient detail (e.g., by disclosure of an algorithm) to 16 establish that the applicant had possession of the claimed invention as of the application filing date.”

The USPTO is accepting comments about these updates, and the deadline for submission of comments is March 8, 2019.

The Federal Register Notices in which the above are announced can be found at:

https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf

https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28283.pdf

The Revised Guidance for 101 and 112 can be found at:

https://s3.amazonaws.com/public-inspection.federalregister.gov/2018-28282.pdf

https://s3.amazonaws.com/public-inspection.federalregister.gov/2018-28283.pdf

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