Subject Matter Patent Eligibility Update to Manual of Patent Examining Procedure (MPEP)

By: James Carlson

The United States Patent and Trademark Office (USPTO) published an update to the Manual of Patent Examining Procedure (MPEP) this past January 2018.  In particular, the update includes changes to various MPEP sections focused on substantive and procedural implementation of the Supreme Court patent eligibility test put forth in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (hereinafter “Alice test”), i.e., MPEP Sections 2103, 2104, 2105, 2106, and 2106.03 through 2106.07(c).   The MPEP update consists of a very thorough overview of recent case law regarding subject matter eligibility, while it also aggregates previous USPTO guidance that was only found in USPTO memoranda.

Moreover, the update further provides clear instructions to patent examiners and applicants of what is required for issuing and overcoming rejections under the Alice test.  For example, MPEP § 2106.07 clarifies the burden among patent examiners and applicants as follows:

When evaluating a claimed invention for compliance with the substantive law on eligibility, examiners should review the record as a whole (e.g., the specification, claims, the prosecution history, and any relevant case law precedent or prior art) before reaching a conclusion with regard to whether the claimed invention sets forth patent eligible subject matter. The evaluation of whether the claimed invention qualifies as patent-eligible subject matter should be made on a claim-by-claim basis, because claims do not automatically rise or fall with similar claims in an application. For example, even if an independent claim is determined to be ineligible, the dependent claims may be eligible because they add limitations amounting to significantly more than the judicial exception recited in the independent claim. Thus, each claim in an application should be considered separately based on the particular elements recited therein.

If the evaluation of the claimed invention results in a conclusion that it is more likely than not that the claim as a whole does not satisfy both criteria for eligibility (Step 1: NO and/or Step 2B: NO), then examiners should formulate an appropriate rejection of that claim under Step 1 and/or Step 2B. The rejection should set forth a prima facie case of ineligibility under the substantive law. The concept of the prima facie case is a procedural tool of patent examination, which allocates the burdens going forward between the examiner and applicant. In particular, the initial burden is on the examiner to explain why a claim or claims are ineligible for patenting clearly and specifically, so that applicant has sufficient notice and is able to effectively respond.

However, while the update is very educational on USPTO policy, patent practitioners are reminded to keep informed of changes to subject matter eligibility law occurring within the courts.   To illustrate the importance of this reminder,  MPEP § 2106.05(d) states “[e]ven if the specification is silent, however, courts have not required evidence to support a finding that additional elements were well‐understood, routine, conventional activities, but instead have treated the issue as a matter appropriate for judicial notice.”  (emphasis added).  But on February 8, 2018 and barely a few weeks after publishing the updated MPEP, the Federal Circuit found “[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact . . . [and] must be proven by clear and convincing evidence.”  See Berkheimer v. HP Inc., No. 2017-1437 (Fed. Cir. Feb. 8, 2018).

Therefore, while the MPEP remains a valuable tool for determining patent eligibility, patent practitioners should continue to utilize multiple resources for staying current on the law.