IP Update, Vol. 13, No. 1

by Marc S. Weiner | BSKB

Editor: Marc S. Weiner, Esq.

Interim Guidance on Patent Subject Matter Eligibility

On December 16, 2014, the U.S. Patent and Trademark Office (USPTO) published Interim Eligibility Guidance (linked here) that offers the USPTO’s current view of subject matter eligibility in line with the U.S. Supreme Court decisions in Alice Corp. [Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S.__, 134 S. Ct. 2347 (2014)], Myriad [Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __, 133 S. Ct. 2107 (2013)], Mayo [Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. __, 132 S. Ct. 1289 (2012)] and related case law. This December 16, 2014 Interim Eligibility Guidance supplements the June 25, 2014 Preliminary Instructions in view of the Supreme Court decision in Alice Corp. and supersedes the March 4, 2014 USPTO procedures issued in view of the Supreme Court decisions in Myriad and Mayo. Since this is Interim Guidance, the USPTO is seeking public comment and suggestions.

In addition, the USPTO provided a set of explanatory examples relating to nature-based products (linked here) to replace the prior examples issued with the March 2014 Procedure and related training.

Additional explanatory examples relating to claims that do/do not amount to significantly more than a judicial exception will be issued at a future date.

It should be further noted that the June 2014 Preliminary [Alice] Instructions (linked here) superseded MPEP sections 2106(II)(A) and 2106(II)(B). MPEP 2105 is also superseded by the December 16, 2014 Interim Eligibility Guidance to the extent that it suggests that “mere human intervention” necessarily results in eligible subject matter. MPEP 2106.01 is also superseded by the December 16, 2014 Interim Eligibility Guidance.

The new flowchart, as shown on page three of the 2014 Interim Eligibility Guidance Quick Reference Sheet (linked here), shows the subject matter eligibility analysis for products/processes to be used during examination for evaluating whether a claim is drawn to patent-eligible subject matter. The analysis set forth in the December 16, 2014 Interim Eligibility Guidance is to be used across all technologies.

Step 2 represented in diamonds (2A) and (2B) is the subject of the December 16, 2014 Interim Eligibility Guidance. Step 2 is the two-part analysis from Alice Corp. and is also called the “Mayo test” for claims directed to laws of nature, natural phenomena and abstract ideas (the judicially recognized exceptions). In step (2A), a claim is directed to a judicial exception when a law of nature, a natural phenomenon, or an abstract idea is recited in the claim. Such a claim is said to require closer scrutiny for eligibility because of the risk that it will “tie up” [see Mayo, 132 S. Ct. at 1301] the excepted subject matter and pre-empt others from using the law of nature, a natural phenomenon, or an abstract idea recited in the claim. For claims directed to nature based products, the nature-based product in the claim is compared to the naturally occurring counterpart to identify “markedly different” characteristics based on structure, function, and/or properties.

This revised analysis is different than the prior USPTO guidance because now changes in functional characteristics and other non-structural properties can evidence markedly different characteristics, whereas in the prior March 2014 Procedure only structural changes were sufficient to show a marked difference. The analysis proceeds to Step (2B) only when the claim is directed to an exception (when no markedly different characteristics are shown). In Step (2B), the analysis determines if any additional elements in the claim add significantly more to the exception. Gone from the December 16, 2014 Interim Eligibility Guidance is the balance factor analysis set forth in prior Guidance.

Summary provided by Marc S. Weiner.

Changes to Allow Delayed Submission of Certain Requirements for Track I Applications

The Final Rule for filing a Track I examination published on November 14, 2014 (linked here).

Previously, upon filing a Track I application the following was required:

  1. Inventor’s oath or declaration.
  2. All required fees.
  3. The application could contain no more than four independent claims, thirty total claims and no multiple dependent claims.

If a request for Track I prioritized examination failed to meet these requirements, then the request was dismissed.

However, effective November 14, 2014, the final rule provided the following:

  1. The filing of an inventors’ oath or declaration may be postponed in accordance with 37 CFR 1.53(f)(3) if an application data sheet meeting the conditions specified in 37 CFR 1.53(f)(3)(i) is present upon filing. [The oath or declaration must be filed no later than the date on which the issue fee for the patent is paid].
  2. If an application contains more than four independent claims, more than thirty total claims, or any multiple dependent claim, the USPTO notifies the applicant and provides a non-extendable one-month period to file an amendment to cancel any independent claims in excess of four, any total claims in excess of thirty, and any multiple dependent claim.
  3. Any excess claim fees due under 37 CFR 1.16(h), (i), or (j) and any application size fee due under 37 CFR 1.16(s) is not required to be paid on filing. [These fees must be paid prior to the expiration of the time period set for reply by the USPTO in any notice of fee deficiency in order to avoid abandonment.]

Significantly, the USPTO maintains the requirement [1.102(e)(1)] that an application for which prioritized examination is requested MUST include payment of the basic filing fee, the search fee, and examination fees upon filing, or the application will NOT be eligible for Track I. Also, the application must be filed via the electronic filing system [EFS]. Further, upon filing the application, the fees for prioritized examination set forth in 1.17(c), the processing fee set forth in 1.17(i)(1) and the publication fee set forth in 1.18(d) must be paid or the application is not eligible for Track I.

Finally, any request for an extension of time will cause a Track I request to be dismissed or cause an application to lose Track I status.

This rule change was initiated by the USPTO to reduce the number of requests for prioritized examination that must be dismissed.

Summary provided by Marc S. Weiner.

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