Subject Matter Eligibility Supplement:
14. 2014 Interim Eligibility Guidance Quick Reference Sheet
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Summary/Easy Read
14. 2014 Interim Eligibility Guidance Quick Reference Sheet
This quick reference sheet provides a summary of the attached guidance document entitled 2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Eligibility Guidance).
- As explained in detail in the Interim Eligibility Guidance, the attached flowchart illustrates the subject matter eligibility analysis for all claims (i.e., machine, composition of matter, manufacture and process claims).
- This analysis is to be used during examination for evaluating whether a claim is drawn to patent-eligible subject matter.
Step 1 is represented in diamond (1), and determines whether the claim is directed to a process, machine, manufacture, or composition of matter.
- This step has not changed and is explained in MPEP 2106(I).
- If the claim is not directed to one of these statutory categories, reject the claim under 35 U.S.C. § 101 as being drawn to non-statutory subject matter and continue examination for patentability.
- If the claim is directed to a statutory category, proceed to Step 2.
Step 2 is the two-part analysis from Alice Corp. (also called the Mayo test) for claims directed to laws of nature, natural phenomena, and abstract ideas (the judicially recognized exceptions).
- This step is represented in diamonds (2A) and (2B) and is the subject of the Interim Eligibility Guidance.
In Step 2A, determine whether the claim is directed to a law of nature, a natural phenomenon, or an abstract idea (judicial exceptions).
- If no, the claim is eligible and examination should continue for patentability.
- If yes, proceed to Step 2B to analyze whether the claim as a whole amounts to significantly more than the exception.
- “Directed to” means the exception is recited in the claim, i.e., the claim sets forth or describes the exception.
- If the claim when viewed as a whole clearly does not seek to “tie up” any judicial exception, use the “streamlined analysis” discussed in Part I.B.3 of the Interim Eligibility Guidance.
- Examples of the types of concepts that the courts have found to be laws of nature, natural phenomena, or abstract ideas are provided in Parts I.A.2 and IV of the Interim Eligibility Guidance.
- If the claim recites a nature-based product limitation, the markedly different characteristics analysis is used to evaluate whether the claim is directed to a “product of nature” that falls under the law of nature and natural phenomenon exceptions.
- To determine whether the markedly different characteristics analysis is needed, and how to perform this analysis, see Part I.A.3 of the Interim Eligibility Guidance.
In Step 2B, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception.
- If no, the claim is ineligible, and should be rejected under 35 U.S.C. § 101 as being drawn to ineligible subject matter, using form paragraphs 7.05 [revised] and 7.05.015 [new].
- If yes, the claim is eligible. In either case, examination should continue for patentability.
- The additional elements should be considered both individually and as an ordered combination. Individual elements when viewed on their own may not appear to add significantly more, but when viewed in combination may amount to significantly more than the exception.
- The Supreme Court has identified a number of considerations for determining whether a claim with additional elements amounts to significantly more than the judicial exception itself.
- Consider each claim separately based on the particular elements recited therein – claims do not automatically rise or fall with similar claims in an application.
- If a claim is directed to a plurality of exceptions, conduct the eligibility analysis for one of the exceptions. Additional elements that satisfy Step 2B for one exception will likely satisfy Step 2B for all exceptions in a claim.
- On the other hand, if the claim fails under Step 2B for one exception, the claim is ineligible, and no further eligibility analysis is needed.
The flowchart may be found in Supplement 14 below:
| Official PDF » | 3 pgs; Serves as a quick reference sheet. |
Written Summary of the Flowchart
FLOWCHART: Subject Matter Eligibility Test for Products and Processes
Prior to evaluating a claim for patentability, establish the broadest reasonable interpretation of the claim. Analyze the claim as a whole when evaluating for patentability.
Step 1: Is the claim to a process, machine, manufacture, or composition of matter?
- If no then the claim is not eligible subject matter under 35 U.S.C. 101.
- If yes, then Step 2A [Part 1 of the Mayo test]: is the claim directed to a law of nature, a natural phenomenon, or an abstract idea (judicially recognized exceptions)?.
- If no then the claim qualifies as eligible subject matter under 35 U.S.C. 101.
- If yes then Step 2B [Part 2 of Mayo test]: Does the claim recite additional elements that amount to significantly more than the judicial exception?
- If no then the claim is not eligible subject matter under 35 U.S.C. 101.
- If yes then the claim qualifies as eligible subject matter under 35 U.S.C. 101.
