Intellectual Property Attorneys


The New Patent Law in New Zealand

The USPTO's January 7, 2019 Revised Patent Subject Matter Eligibility Guidance

5 years ago

January 6, 2019

The United States Patent and Trademark Office has just issued 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 Guidance”), which is effective on January 7, 2019.

The 2019 Guidance revises the so-called Alice/Mayo test Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217-18 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)) that has been applied to determine patent-eligible subject matter under 35 USC §101.

The full text of the 2019 Guidance is available at

The procedure for determining patent subject matter eligibility under 35 USC §101 under the 2019 Guidance may be summarized as follows.

Step 1: Determine whether the claimed subject matter falls within one of the statutory subject matter categories of process, machine, manufacture, or composition of matter; if yes, proceed to Step 2A; if no, the claim is not patent eligible.

Step 2A (two prong determination):

Prong One: Determine whether the claim recites a judicial exception (an abstract idea, law of nature, or natural phenomenon) - in order to constitute an abstract idea, the limitation(s) of the claims must be within the specific categories of:

  • mathematical concepts,


mathematical relationships, mathematical formulas or equations, mathematical calculations;

  • certain methods of organizing human activity,

fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business

relations); managing personal behavior or relationships or interactions between

people (including social activities, teaching, and following rules or instructions); and

  • mental processes


concepts performed in the human mind (including an observation, evaluation, judgment, opinion).

If the claim does not recite a judicial exception, then the claim specifies patent-eligible subject matter. If the claim does recite a judicial exception, then Prong Two is considered.

Prong Two: Determine if the claim reciting a judicial exception is “directed to” such judicial exception. The claim specifies patent-eligible subject matter, and is not “directed to” the judicial exception, if the claim as a whole integrates the judicial exception into a practical application of that exception. The USPTO has given various illustrative examples of such integration into a practical application, by additional element(s) of the claim other than the judicial exception:

  • an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
  • an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
  • an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
  • an additional element effects a transformation or reduction of a particular article to a different state or thing; and
  • an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.

If the claim satisfies the integrated practical application standard, then it is patent eligible. If the claim does not satisfy the integrated practical application standard, then it is evaluated under Step 2B.

Step 2B: Determine whether element(s) of the claim other than the judicial exception provide an inventive concept involving “significantly more” than the judicial exception, such as limitations that are not well-understood, routine, conventional activity in the field of the invention.

The modified procedure of the 2019 Guidance improves the patent subject matter eligibility determination, by restricting patent-ineligible abstract ideas to specific identified categories, and by elaborating the concept of an integrated practical application in terms of specific approaches that will yield patent-eligible subject matter.

Steven Hultquist

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