USPTO Publishes Interim Guidelines for Subject Matter Eligibility

Recognizing that "the state of the law with respect to subject matter eligibility is in flux," the USPTO has published interim examination instructions while waiting for the Supreme Court to decide Bilski. The PTO has indicated that the instructions "supersede previous guidance on subject matter eligibility that conflicts with the Instructions, including MPEP 2106(IV), 2106.01 and 2106.02."

The PTO's approach is unremarkable and reasonably straightforward. Examiners are instructed to distill section 101 analysis down to 2 steps:

(1) Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter?

Here, items such as transitory forms of signal transmission, legal contractual agreements, and a game defined as a set of rules are deemed non-statutory. Interestingly, the USPTO has also adopted the EU-like position that "a computer program per se" is also not patentable. Claims that cover bot statutory and non-statutory embodiments are also not patentable.

(2) Does the claim wholly embrace a judicially recognized exception, which includes abstract ideas, mental processes or substantially all practical uses (pre-emption) of a law of nature or a natural phenomenon, or is it a particular practical application of a judicial exception?

Just as before, abstract ideas, mental processes, laws of nature and natural phenomena are not patentable. However, a claim that is limited to a particular practical application of a judicially recognized exception is eligible for patent protection. A “practical application” relates to how a judicially recognized exception is applied in a real world product or a process, and not merely to the result achieved by the invention.

The instructions are a mere 8 pages long (compared to the 2005 guidelines that clocked in at 59 pages) and easy to follow. There are even some handy flowcharts that simplify the process further.

Download the memo and examination instructions here (link)