Patent Office Releases New Section 101 Guidance for Examiners

January 11, 2019

The United States Patent and Trademark Office recently released new guidance to its examiners on how claims are to be examined under 35 U.S.C. § 101, to determine whether claims recite patent-eligible subject matter or merely abstract ideas. The patent office explained that it compiled the new guidance in response to concerns that examination under §101 has been inconsistent and unpredictable. In summary, the guidance appears to make it more challenging for examiners to identify a claim as not eligible for patenting, by eliminating some previously common §101 practices and introducing new steps examiners must take. 

The New Guidance


The revised guidance clarifies examination procedures for determining subject matter eligibility with respect to the first step of the two-part test of the Supreme Court’s 2014 Alice decision. (Examination procedures with respect to the second step are largely unchanged by the new guidance.) As you may recall, this first step of the Alice test relates to whether a claim is directed to an abstract idea that is itself not eligible for patenting, while the second step of the Alice test calls for determining whether a claim that is directed to an abstract idea additionally recites an inventive concept that is “significantly more” than that abstract idea. A claim passes the §101 test and is eligible for patenting if it is not directed to an abstract idea, or if it recites such an inventive concept.

The new guidance sets out a two-prong test for the first step of the Alice test. In the first prong, the guidance requires an examiner to identify whether a claim “recites” an abstract idea, which must fall into one of three groups: mathematical concepts, certain methods of organizing human activity, and mental processes. The guidance prohibits examiners from using the currently-common approach of identifying abstract ideas by drawing analogies to court cases. That practice had been criticized because, critics said, the analogies were seldom perfect and allowed examiners to paint with too broad a brush in identifying abstract ideas. The guidance itself states that this approach was “impractical” and could lead to “inconsistent results” in examination.

If, at the first prong, an examiner believes that the claim does not recite an idea from one of the three groups, the claim passes §101 and should be found eligible. If, however, the examiner believes the claim does recite an abstract idea, the guidance now requires the examiner to determine whether the claim is truly “directed to” that idea or instead directed to a practical application of that idea. This differs from current practice because, previously, the patent office did not distinguish between claims that “recited” abstract ideas and claims that were “directed to” abstract ideas. This introduces a new hurdle for examiners in making rejections. The guidance sets out somewhat broad categories for examiners to use in evaluating whether a claim includes a practical application, including whether the claim recites an improvement to a computer or other technology or includes limitations reciting how the idea is “applied or used” in a “meaningful way.” Of course, it remains to be seen how individual examiners will apply the guidance, but some examiners may find it straightforward to conclude that claims recite such a practical application based on those broad categories.

Next Steps


The USPTO will be training examiners with this new guidance soon, and is starting to roll out training materials including examples of applying the guidance to sample claims. In applications facing §101 rejections, we will be working with the examiners as they are trained, to determine the best approach for leveraging the guidance and these examples to submit persuasive responses and advance prosecution.

Let us know if you have any questions or would like to discuss the guidance further, or how it might be applied to any of your applications.