Maier & Maier

USPTO Releases New Guidance on §101 and §112 Eligibility

As Director Iancu promised in his recent address,  the USPTO has issued revised guidance on the evaluation of eligibility. Specifically, the guidance sheds light on how the USPTO will address §101 abstract analysis and §112 in relation to computer implemented inventions. This memo is part of Iancu’s long-stated mission of bringing greater clarity and predictability on Alice/Mayo interpretations for inventors. Per the official press release, the releases aim to ensure “consistent, predictable, and correct application of these principles”.

For §101, the guidance provides two key changes: identifying specific categories of concepts defined as abstract and providing a two-step analysis for how to deal with such concepts when determining eligibility under §101.

By listing out the specifically identified concepts defined as abstract, the USPTO hopes to bring more structure to §101 objections and force analysis to specifically identify the category and caselaw behind the objection. The concepts the guidance lists as abstract from court decisions are as follows: mathematical concepts, certain methods of organizing human activity, and mental processes.

The two-step analysis is also aimed at reigning in objections to any subject matter relating to one of those concepts. The first step prescribed by the guidance is whether the claim recites one of the identified judicial exceptions. If so, the next step is to identify whether the recitation of the abstract judicial exception is integrated as part of a practical application. If the claim recites a judicial exception with no practical application, only then should the claim be analyzed further under Step 2 of the Alice/Mayo test.

With respect to §112, the revision hones in on computer-implemented inventions to provide guidance on “proper application of means-plus-function principles under § 112(f), definiteness under § 112(b), and written description and enablement under § 112(a).”

Both the guidance memos are available in full on the USPTO website. Find §112 here and § 101 here. The USPTO is seeking written comments to this guidance to be sent to  Eligibility2019@uspto.gov on or before March 8, 2019.

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