USPTO Releases Revised Guidance for Patent Subject Matter Eligibility
Intellectual Property Blog
Jan 22, 2019
San Diego, CA
Todd Langford, Esq.
The USPTO recently released revised guidelines to assist examiners in making patent subject matter eligibility determinations under the
Alice/Mayo test. The official notice of the 2019 Revised Patent Subject Matter Eligibility Guidance may be found at https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf.
This revised guidance includes some important changes that may increase the likelihood of patentable subject matter, particularly in the software arts. For example, when determining whether a claim is “directed to” an “abstract idea” under the
Alice/Mayo test, the guidance identifies three groups of abstract ideas: mathematical concepts, methods of organizing human activity, and mental processes. If the claim does not recite matter within one of these three groups, it is unlikely to cover an abstract idea, and therefore likely includes patentable subject matter.
It will take some time to see the practical effects of this guidance, but does offer some hope to those struggling with subject matter eligibility rejections before the USPTO.
*The information in this article is provided for general informational purposes only, and may not reflect the current law in your jurisdiction. No information contained in this post should be construed as legal advice from Greenspoon Marder LLP or the individual author(s), nor is it intended to be a substitute for legal counsel on any subject matter. No reader of this post should act or refrain from acting on the basis of any information included in, or accessible through, this Post without seeking the appropriate legal or other professional advice on the particular facts and circumstances at issue from a lawyer licensed in the recipient’s state, country or other appropriate licensing jurisdiction.
About Greenspoon Marder
Greenspoon Marder is a national full-service business law firm with over 200 attorneys and offices across the United States. We are ranked among
American Lawyer’s Am Law 200, as one of the top law firms in the U.S. since 2015. Our firm was founded with the goal of providing the highest quality legal services at the highest value for our clients. Each of our clients is unique and so are their legal needs. We believe no one size fits all for professional services. Our lawyers offer flexible and creative solutions to meet our clients’ respective needs. Our mission is to understand the challenges our clients face, build collaborative relationships and craft solutions with a focus on strategic goals.
Natalie Villanueva, Director of Marketing
954.333.4308 | firstname.lastname@example.org
This Greenspoon Marder LLP Client Alert is issued for informational purposes only and is not intended to be construed or used as general legal advice nor a solicitation of any type. Please contact the author(s) or your Greenspoon Marder LLP contact if you have any questions regarding the currency of this information. The hiring of a lawyer is an important decision. Before you decide, ask for written information about the lawyer’s legal qualifications and experience.