Not So Fast: 2019 Federal Circuit Cases Challenge Reliance On USPTO Guidelines On Subject Matter Eligibility

Robert W. Payne

Payne IP Law

Patent prosecutors who hew to the 2019 subject matter eligibility guidelines, issued by the USPTO, risk failure in the courts. Although the USPTO sought to instill greater clarity on the troublesome issue of Section 101 viability, the Federal Circuit has not gotten in line. Slavishly following the guidelines alone may jeopardize the resulting patent and diminish its licensing value.

On January 7, 2019, the USPTO released the 2019 Revised Patent Subject Matter Eligibility Guidance ("Revised Guidance")¹ to enable patent examiners to evaluate patent-eligible subject matter under 35 U.S.C. § 101. The Revised Guidance is expected to lead to greater acceptance on eligibility grounds, and to "eliminate" reference to inconsistent decisions under the Alice/Mayo test.² The Alice/Mayo test asks in a first step whether the invention is directed to one of the patent-ineligible concepts, one of which is an "abstract idea." However, the Supreme Court in Alice cautioned that all inventions at some level have a degree of an abstract idea. Overly aggressive identification of abstraction could "swallow all of patent law." The invention must be "directed to" the abstract concept to satisfy step one. Notably, case law must be consulted to make this determination.