The USPTO rang in the new year by releasing new Examiner Guidance that could potentially benefit patent applicants who have previously encountered difficulty acquiring patents under the Office’s procedures for determining patent subject matter eligibility under 35 U.S.C. § 101. Supreme Court decisions regarding § 101 from 2012 to 2014 have made patents related to software and certain biotechnology related subject matter more difficult to obtain. As detailed below, the new guidance seems to indicate a major shift in how the USPTO will examine patent applications under § 101. This shift appears to swing the pendulum back toward patent holders by allowing many more applications to meet the patentability requirements of § 101.
Specifically, the guidance sets forth two major changes to examination procedures for determining whether a patent application is directed to a judicial exception to patent eligibility (laws of nature, natural phenomena, or an abstract idea). First, the guidance clarifies the concepts that may constitute an abstract idea by narrowing to only three groups the subject matter included in the abstract idea exception. Second, even if a patent claim is found to recite a judicial exception, the guidance explains that the claim is still patent-eligible if it integrates the judicial exception into a “practical application” of the judicial exception.