• USPTO Provides 8 Examples of Abstract Idea Analysis for Patent Eligible Subject Matter
  • April 14, 2015
  • Law Firm: Staas Halsey LLP - Washington Office
  • In December 16, 2014, the United States Patent and Trademark Office ("USPTO") issued the “2014 Interim Guidance on Patent Subject Matter Eligibility” (“Guidance”) in light of decisions by the U.S. Supreme Court, including Mayo, Myriad, and Alice Corp. The USPTO also issued Examples on January 27, 2015. There are eight (8) examples of USPTO’s interpretation of subject matter eligibility under 35 U.S.C. 101 with regard to evaluating whether a patent application claim is directed to an abstract idea.

    The U.S. Supreme Court decision in Alice Corp vs. CLS Bank, issued on June 19, 2014, invalidated a computerized method of managing risk in financial trading. The Examples provide fact patterns tracking recent cases after the Alice Corp decision, with claims that are indicated as patent eligible and ineligible.

    The USPTO Guidance and Examples should aid Examiners as well as Applicants in determining whether a patent application could be directed to an abstract idea in light of these recent court decisions. The USPTO also provides examples analyzing claims reciting or involving laws of nature, natural phenomena and/or natural produces.

    Applicants may consider referencing the USPTO Guidance and Examples when drafting patent application claims as well as during prosecution of pending patent applications, with the caveat that recent court decisions continue to change the landscape of patent eligible subject matter.