On December 15, the U.S. Patent and Trademark Office issued the "2014 Interim Guidance on Patent Subject Matter Eligibility" in the wake of several significant U.S. Supreme Court decisions and wide criticism of the USPTO March 2014 guidelines.

The USPTO is responsible for determining whether an invention or abstract idea is eligible to receive a patent. However, guidelines issued by the USPTO are not a rule of law. If a party seeking a patent appeals a decision of the USPTO, a court of law will not use USPTO guidelines to reach its decision.

Significant Supreme Court cases prompt legal concerns

In a landmark 2013 ruling, the Supreme Court held that purified DNA could not obtain a patent ( Association for Molecular Pathology v. Myriad Genetics). In the opinion's aftermath, the USPTO issued guidelines in March of 2014 which created a complex approach to determining whether something is patentable or not. It has been unclear how the Myriad decision would affect future patent-seekers. Many critics claimed the USPTO went beyond the requirements set out in Myriad when it issued the March guidelines.

USPTO issues new guidelines in response to criticisms

The new interim guidelines published in December supersede those previous. Specifically, the guidance clarifies the USPTO stance after Alice Corporation Pty. Ltd. v. CLS Bank International, which held that a computer system used to exchange financial obligations was an unpatentable abstract idea under 35 U.S.C. Section 101. In Alice Corp., the high court essentially laid out a two-step analysis on whether something is patentable: if the claim for a patent is towards a law of nature, natural phenomenon, or abstract idea, then it must be "significantly more" than something found in nature in order to be eligible to receive a patent.

USPTO Subject matter eligibility

The USPTO guidelines follow a similar analysis for patent applications that are looking to meet a "judicial exception." Natural minerals and abstract ideas are generally not patentable, unless the application meets an exception set out by previous case law. The guidelines address an application seeking such an exception, by asking:

  • Is the application regarding a process, machine, manufacture or composition of matter? If not, it is not patentable.
  • Is the claim directed to a law of nature or natural phenomenon? If so, then it is not patentable.
  • Does the claim recite additional elements that amount to "significantly more" than judicial exceptions? If not, then it is not patentable.

Because the analysis is geared towards judicial exemptions, the revised guidelines could potentially avoid situations in which products or manufacturing methods which use natural minerals do not receive a patent - an issue which caused much concern in the March guidelines.

Help with patents

Patents are essential to the economic wellbeing of the country. Since its inception, America has sought to reward innovation through the issuance of patents. However, patent law has emerged as an extremely complex and highly nuanced area of the law. For help with seeking a patent, contact the experienced attorneys at the Eldredge Law Firm to discuss patent eligibility.