USPTO Releases Revised Guidance for Patent Subject Matter Eligibility

Jan 22, 2019

By: Todd Langford, Esq.

The USPTO recently released revised guidelines to assist examiners in making patent subject matter eligibility determinations under the Alice/Mayo test. The official notice of the 2019 Revised Patent Subject Matter Eligibility Guidance may be found at https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf.

This revised guidance includes some important changes that may increase the likelihood of patentable subject matter, particularly in the software arts. For example, when determining whether a claim is “directed to” an “abstract idea” under the Alice/Mayo test, the guidance identifies three groups of abstract ideas: mathematical concepts, methods of organizing human activity, and mental processes. If the claim does not recite matter within one of these three groups, it is unlikely to cover an abstract idea, and therefore likely includes patentable subject matter.

It will take some time to see the practical effects of this guidance, but does offer some hope to those struggling with subject matter eligibility rejections before the USPTO.

*The information in this article is provided for general informational purposes only, and may not reflect the current law in your jurisdiction. No information contained in this post should be construed as legal advice from Greenspoon Marder LLP or the individual author(s), nor is it intended to be a substitute for legal counsel on any subject matter. No reader of this post should act or refrain from acting on the basis of any information included in, or accessible through, this Post without seeking the appropriate legal or other professional advice on the particular facts and circumstances at issue from a lawyer licensed in the recipient’s state, country or other appropriate licensing jurisdiction.

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