The Patent Office Issues 2019 Patent Subject Matter Guidance

Monday, January 28, 2019

The U.S. Patent & Trademark Office (“USPTO”) has issued a 2019 Revised Patent Subject Matter Eligibility Guidance document (“2019 Guidance”) for use by USPTO personnel, including more than 8500 patent examiners, in evaluating subject matter eligibility.  The 2019 Guidance further divides the USPTO’s examination procedure into two additional steps or “prongs.”  Prong One provides that an invention is an abstract idea if its falls within one of the following groupings:  (a) mathematical concepts; (b) certain methods of organizing human; (c) mental processes; and (d) “rare circumstances” in which the USPTO believes a claim limitation that does not fall within the enumerated groupings of abstract ideas should nonetheless be treated as an abstract idea.  If a claim recites an abstract idea enumerated in one of the above groupings, or is a law of nature or a natural phenomenon, then the claim is evaluated under Prong Two.  Under this second prong, the claim is subject-matter eligible if the USPTO determines that “the claim as a whole integrates the exception into a practical application of that exception,” meaning the claim applies, relies on, or uses the judicial exception “in a manner that imposes a meaningful limit on the judicial exception.”