USPTO ISSUES NEW SUBJECT MATTER ELIGIBILITY GUIDANCE

The USPTO has issued new subject matter eligibility guidelines, which can be found here.  I have reviewed the 27 page guidelines and have the following comments.

The USPTO now has expressly identified groups of abstract ideas to be used in the Alice/Mayo test.  The groups of abstract ideas are:

a) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;

b) Certain methods of organizing human activity;

c) Mental processes.

In addition there is a “…rare circumstance in which a USPTO employee believes a claim limitation that does not fall within the enumerated groupings of abstract ideas should nonetheless be treated as reciting an abstract idea”.

Further, the USPTO states that claim are NOT directed to a judicial exception  (abstract idea), “if the claim as a whole integrates the recited judicial exception into a practical application of that exception”.   The USPTO goes on to state:

“If the recited exception is integrated into a practical application of the exception, then the claim is eligible at Prong Two of revised Step 2A. This concludes the eligibility analysis.

“If, however, the additional elements do not integrate the exception into a practical application, then the claim is directed to the recited judicial exception, and requires further analysis under Step 2B (where it may still be eligible if it amounts to an “inventive concept”).”

With respect to the “integrated into a practical application” determination, the USPTO states the following:

“Examiners evaluate integration into a practical application by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit, for example those listed below.”

“Examiners should note, however, that revised Step 2A specifically excludes consideration of whether the additional elements represent well-understood, routine, conventional activity.”

“In the context of revised Step 2A, the following exemplary considerations are indicative that an additional element (or combination of elements)24 may have integrated the exception into a practical application:

“an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;

“an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;

“an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;

“an additional element effects a transformation or reduction of a particular article to a different state or thing; and

“an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.”

I believe the above guidance will help inventors and patent attorneys in protecting inventions in the business method and software arts.

USPTO remains open despite government shutdown

According to the USPTO: 

“Although parts of the federal government have experienced a lapse in appropriated funding, the USPTO remains open for business as normal. This is possible because the agency has access to prior-year fee collections, which enables the USPTO to continue normal operations for a few weeks. Should the USPTO exhaust these funds before a partial government shutdown comes to an end, the agency would have to shut down at that time, although a small staff would continue to work to accept new applications and maintain IT infrastructure, among other functions. Further information regarding any adjustments to the USPTO’s operating status will be posted on the USPTO website and delivered to the news media.”  The USPTO statement can be found here

USPTO offers free virtual instructor led training webinar on Legal Analysis Writing Workshop

The USPTO will offer training to members of the public as part of the Virtual Instructor Led Training (vILT) program. vILT is designed to allow stakeholders in the USPTO to be briefed on a variety of focused topics related to examination practice and procedure derived from recent training delivered to experienced USPTO examiners. The interactive online format of vILT allows participants to remotely attend the training without the need to travel to USPTO locations.     

Registration is opened from December 17, 2018 – January 27, 2019 for the next vILT webinar titled “Legal Analysis Writing Workshop” scheduled for February 12 and 13, 2019 at 1pm ET. This course if for patent attorneys and patent agents.  This course is first come first serve, has a limited capacity, and selection is required to attend. The USPTO is applying for CLE credit in Virginia for this course. All vILT events are free to attend.  The sign up form can be found here

Attorney/Agent course on examination practice and procedure at USPTO

Sign up to attend the March 5 – 7, 2019, Attorney/Agent 3-day course on examination practice and procedure at the USPTO Rocky Mountain Regional Office in Denver. CLE credit in Colorado is approved for this course. This training makes use of statutes, rules, and guidelines relevant to practicing before the USPTO. Attendance is limited those who have passed the patent bar, with priority given to those who passed recently. USPTO trainers will present the course based on material developed for training patent examiners and other employees. More information and a proposed upcoming course schedule is available on the Stakeholder Training on Examination Practice and Procedure (STEPP) page of the USPTO website, and can be seen here.

Patent Examining Training for Inventors at the USPTO–FEB 5-7, 2019

Registration is now open for the Feb. 5 – 7, 2019 USPTO Inventor 3-Day Course on Examination Practice and Procedure. The course is offered to members of the public as part of their Stakeholder Training on Examination Practice and Procedure (STEPP) program. The event will be held at the USPTO headquarters in Alexandria, Virginia.  The cost is FREE!

If you are interested in attending, please use the USPTO’s sign-up form.

This course is limited to current and future inventors. It is not intended for those interested in representing applicants before the USPTO. As a prerequisite, those accepted will be required to review several computer-based training (CBT) modules prior to the course dates.

More information, and a proposed upcoming course schedule, is available on the STEPP page of the USPTO website.