Updated Guidance on Section 101 Subject Matter Eligibility

Photo of John P. Isacson
John P. Isacson

On October 17, 2019, the U.S. Patent and Trademark Office issued a 22-page updated guidance document on subject matter eligibility under 35 USC §101.  Subject matter eligibility is becoming increasingly important in the computer and life sciences areas.

Subject matter eligibility issues can be encountered in post-grant reviews and inter partes reviews when amended claims are presented.  Most issues relate to whether a claim is directed to an abstract idea or law of nature.  The October 2019 Guidance document provides information on:

(I) evaluating whether a claim recites a judicial exception;

(II) the groupings of abstract ideas enumerated in the January 2019 Guidance (84 Fed. Reg. 50);

(III) evaluating whether a judicial exception is integrated into a practical application;

(IV) the prima facie case and the role of evidence with respect to eligibility rejections; and

(V) the application of the January 2019 Guidance in the patent examining corps.

Click here to read the October 2019 Guidance document.

Click here for the Appendix 1 to the Guidance document.