USPTO issues new guidelines on Alice/Mayo implementation

The US Patent and Trademark Office (USPTO) has published new guidelines on the eligibility of subject matter in patent applications.

The guidelines, issued on Friday, January 4, revised the instructions to patent examiners for how they should apply the first step of the US Supreme Court’s Alice/Mayo test.

Devised in the wake of the court’s 2012 Mayo v Prometheusand 2014 Alice v CLS Bank rulings, the test set out guidelines for determining whether an invention is patent-eligible.

The USPTO’s new guidelines have revised the implementation of the first step of Alice/Mayo, which determines whether the claims at issue are “directed to” a patent-ineligible concept.  

In the Alice decision, the court reiterated its position that “laws of nature, natural phenomena, and abstract ideas are not patentable”.

Explaining the need for new guidelines, the USPTO said that “many stakeholders, judges, inventors, and practitioners across the spectrum have argued that something needs to be done to increase clarity and consistency in how” the test is applied.

In the guidelines, the USPTO specified three categories of “abstract ideas” which should be considered ineligible: mathematical ideas, certain methods of organising human activity, and mental processes. Claims outside of these groupings “should not be treated as reciting abstract ideas”, the guidelines said.

The USPTO further clarified that a patent directed towards an abstract idea, or “judicial exception”, is still eligible if integrated into a practical application. A patent claim may still be considered eligible if it “recites an abstract idea, law of nature, or natural phenomenon” to improve the functioning of a computer or another technological device.

Patent claims which simply implement abstract ideas using computers or technology do not qualify as a practical application of the idea, the guidelines said.

Gene Quinn, founder of IPWatchdog, said in a post that “the USPTO is effectively defining what is and what is not an abstract idea, thereby filling a void intentionally left ambiguous by both the Supreme Court and the Federal Circuit”.

Andrei Iancu, under secretary of commerce for IP and director of the USPTO, said in a statement that the new guidelines would “improve the clarity, consistency, and predictability of actions across the USPTO”.

The new guidelines come into effect today, January 7.