The USPTO Issues Revised Guidance on Finding Claims Directed to a Judicial Exception

By James Carlson


On January 7, 2019, the USPTO published a Federal Register notice (hereinafter “Revised Guidance”)[1] revising various patent examination procedures relating to subject matter eligibility.  In particular, the Revised Guidance changes how examiners must analyze claims to determine if they are “directed to” a judicial exception under Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014).  Specifically, the Revised Guidance introduces a new two-prong analysis:  (1) the examiner determines whether the claim recites a judicial exception; and (2) if the claim does recite a judicial exception, the examiner then determines whether the judicial exception is “integrated into a practical application”.   If the claim integrates the judicial exception into a practical application, the claim is not considered to be “directed to” a judicial exception under the Step 2A of the current USPTO eligibility test and thus will be found patent-eligible by the USPTO without further consideration.  If the claim does not integrate the judicial exception into a practical application, then the examiner will need to proceed to Step 2B of the current USPTO eligibility test.  The Revised Guidance also limits examiners to several enumerated subject matter groupings to determine whether a claim limitation recites an abstract idea.

To assist patent applicants and examiners in following the Revised Guidance, the USPTO has issued several abstract idea fact patterns illustrating claims that integrate judicial exceptions into practical applications.[2]  These abstract idea fact patterns include examples directed to graphical user interface methods, analog circuit simulations, machine learning algorithms, and adaptive monitoring techniques, which were routinely found patent ineligible by various art units at the USPTO.

The revised guidance and abstract idea examples are a positive step forward in bringing predictability and uniformity to patent applications being examined at the USPTO.

[1] https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf

[2] https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_20190107.pdf