USPTO Updates 101 Guidance: Making Abstract More ConcreteJanuary 8, 2019

Recently the United States Patent & Trademark Office (USPTO) has announced plans to update their guidance on 101 issues and will do so after a period of public input in order to increase clarity during prosecution. This update will replace, not just update, several sections of MPEP 2106. The update will also provide practitioners a more solid ground to argue 101 issues during prosecution.

The first section is MPEP 2106.04(II), which is Step 2A (Alice/Mayo Step 1) for determining if a claim is directed to a judicial exception. This will replace all versions of the USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas” and the guidance issued prior to R-08.2017, so these should no longer be relied upon.

Rather, the USPTO has turned Step 2A into a two-prong test. The first prong is determining if the claim actually recites one of the members belonging to a USPTO defined groups of judicial exceptions. If the claims do not recite one of the judicial exceptions, then, except for rare circumstances, the claim should not be treated as reciting an abstract idea and should be eligible subject matter.

However, if the claim is found to recite a judicial exception, then it will continue into the second, newly created, prong. This new prong determines if the judicial expectation is being used for a practical application, and if so, then it is eligible subject matter. Even if the claim recites additional well-understood, routine, or conventional activities, it is still eligible subject matter, as this is assessed in Step 2B, which has not changed. This change seems to be an effort to put well-understood, routine, or conventional activities back where they belong, in 102 and 103 analysis instead of subject matter eligibility analysis.

Given these new guidelines, it should be easier for practitioners to write or amend claims to get out of a subject matter rejection at Step 2A by incorporating the exception into a process or system which uses the law of nature, natural phenomena, or abstract idea in some way.

Oliver P. Couture is an Intellectual Property Attorney in the Biotechnology & Chemical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit the MVS website or contact Oliver directly via email at oliver.couture@ipmvs.com.

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