Subject Matter Eligibility Supplement:
15. 2014 Interim Guidance on Patent Subject Matter Eligibility
| Official PDF » | 16 pgs; Includes a flow chart and details. |
15. 2014 Interim Guidance on Patent Subject Matter Eligibility
Summary:
The United States Patent and Trademark Office (USPTO or Office) has prepared interim guidance (2014 Interim Guidance on Patent Subject Matter Eligibility, called ‘‘Interim Eligibility Guidance’’) for use by USPTO personnel in determining subject matter eligibility under 35 U.S.C. 101 in view of recent decisions by the U.S. Supreme Court (Supreme Court).
This Interim Eligibility Guidance supplements the June 25, 2014, Preliminary Examination Instructions in view of the Supreme Court decision in Alice Corp. (June 2014 Preliminary Instructions) and supersedes the March 4, 2014, Procedure For Subject Matter Eligibility Analysis Of Claims Reciting Or Involving Laws Of Nature/Natural Principles, Natural Phenomena, And/Or Natural Products (March 2014 Procedure) issued in view of the Supreme Court decisions in Myriad and Mayo.
Effective Date:
This Interim Eligibility Guidance is effective on December 16, 2014.
- This Interim Eligibility Guidance applies to all applications filed before, on or after December 16, 2014.
Supplementary Information:
Section 2106 of the Manual of Patent Examining Procedure (MPEP) sets forth guidance for use by USPTO personnel in determining subject matter eligibility under 35 U.S.C. 101.
The USPTO has prepared this Interim Eligibility Guidance for use by USPTO personnel in determining subject matter eligibility under 35 U.S.C. 101 in view of recent decisions by the Supreme Court.
Implementation of examination guidance on eligibility will be an iterative process continuing with periodic supplements based on developments in patent subject matter eligibility jurisprudence and public feedback.
This Interim Eligibility Guidance sets out the Office’s interpretation of the subject matter eligibility requirements of 35 U.S.C. 101 in view of recent decisions by the Supreme Court and the U.S. Court of Appeals for the Federal Circuit (Federal Circuit), and advises the public and Office personnel on how these court decisions impact the provisions of MPEP 2105, 2106 and 2106.01.
This Interim Eligibility Guidance has been developed as a matter of internal Office management and is not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office.
- Rejections will continue to be based upon the substantive law, and it is these rejections that are appealable.
The June 2014 Preliminary Instructions superseded MPEP sections 2106(II)(A) and 2106(II)(B).
- MPEP 2105 is also superseded by this Interim Eligibility Guidance to the extent that it suggests that ‘‘mere human intervention’’ necessarily results in eligible subject matter.
MPEP 2106.01 is additionally now superseded with this interim guidance.
The following sections pertain to examining for patent subject matter eligibility with details on determining what applicant invented and making a rejection under 35 U.S.C. 101 and should be reviewed closely as they are not duplicated in this Interim Eligibility Guidance:
MPEP 2103: Patent Examination Process
- 2103(I): Determine What Applicant Has Invented and Is Seeking to Patent
- 2103(II): Conduct a Thorough Search of the Prior Art
- 2103(III): Determine Whether the Claimed Invention Complies With 35 U.S.C. 101
- 2103(IV): Evaluate Application for Compliance With 35 U.S.C. 112
- 2103(V): Determine Whether the Claimed Invention Complies With 35 U.S.C. 102 and 103
- 2103(VI): Clearly Communicate Findings, Conclusions, and Their Bases
MPEP 2104: Patentable Subject Matter
MPEP 2105: Patentable Subject Matter—Living Subject Matter 6
MPEP 2106: Patent Subject Matter Eligibility
- 2106(I): The Four Categories of Statutory Subject Matter
- 2106(II): Judicial Exceptions to the Four Categories (not subsections (II)(A) and (II)(B))
- 2106(III): Establish on the Record a Prima Facie Case
This Interim Eligibility Guidance is divided into the following sections:
- Flowchart: Eligibility Test for Products and Processes;
- Part I: Two-part Analysis for Judicial Exceptions;
- Part II: Complete Examination;
- Part III: Sample Analysis; and
- Part IV: Summaries of Court Decisions Relating to Laws of Nature, Natural Phenomena, and Abstract Ideas.
