The 2019 Guidance
The United States Patent and Trademark Office (USPTO) has just issued its 2019 Revised Patent Subject Matter Eligibility Guidance for use by USPTO personnel, which took effect January 7, 2019. The Guidance changes the procedures patent examiners use to determine under Alice/Mayo whether a patent claim directed to a judicial exception to 
patentability i.e. (laws of nature, natural phenomena, and abstract ideas) is patentable or not. The Guidance outlines a new two-part Step 2A and a new Step 2B process patent examiners must undertake under Alice/Mayo in determining whether a patent claim is unpatentable as a judicial exception to patentability.
Step 1
Step 1 of the Alice/Mayo test, determining if the claim is to a process, machine, manufacture, or composition of matter, remains unchanged.
Step 2A
Step 2A has been revised to be a two-part analysis. First, patent examiners must now reference specifically outlined categories (see below) of subject matter that constitute “abstract ideas.” Second, if a patent examiner determines that a patent claim contains an abstract idea, the patent examiner must now determine if the claim, as a whole, incorporates the judicial exception into a practical application. If the claim does not recite a judicial exception from one of the new categories, or if the claim does recite a judicial exception, but incorporates the judicial exception into a practical application, the claim is not “directed to” a judicial exception. Under newly revised Step 2A, it does not matter if the non-judicial exception elements of the claim are “well-understood, routine, conventional activity.” The only consideration under Step 2A is whether the claim incorporates the judicial exception into a practical application.
Step 2B
Only if the claim does recite a judicial exception from one of the new categories and does not incorporate the judicial exception into a practical application, may a patent examiner proceed to evaluate the patent eligibility of the claim under Step 2B. Step 2B under Alice/Mayo has been revised as well. Under new Step 2B, the examiner may consider whether the non-judicial exception elements of the claim are “well-understood, routine, conventional activity.” If the non-judicial exception element(s) of the claim are unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, the claim is patent eligible. Similarly, if the examiner determines that the element(s) amounts to significantly more than the exception itself the claim is patent eligible.
The New Groupings of Abstract Ideas
The groupings of subject matter under Step 2A that are considered “abstract ideas” are as follows:
(a) Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations;
(b) 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);
(c) Mental processes—concepts performed in the human mind?(including an observation, evaluation, judgment, opinion).
Except under rare circumstances, that require special approval by the Technology Center Director, if the claims do not recite matter within one of the foregoing categories, patent examiners are not to treat the claims as reciting abstract ideas.
Examples of Integrating a Judicial Exception Into a Practical Application
The following is a non-exclusive list of examples of considerations that indicate an additional element(s) may have integrated a judicial exception into a patentable practical application:
The additional element(s) reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
The additional element(s) applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
The additional element(s) implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
The additional element(s) effects a transformation or reduction of a particular article to a different state or thing; and
The additional element(s) 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.
Examples of Not Integrating a Judicial Exception Into a Practical Application
Some examples in which a judicial exception has not been integrated into a practical application include the following:
The additional element(s) merely recites the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely includes instructions to
implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;
The additional element(s) adds insignificant extra-solution activity to the judicial exception; and
The additional element(s) does no more than generally link the use of a judicial exception to a particular technological environment or field of use.
Only time will tell whether the foregoing will add much-needed consistency to the judicial exception issue, but this Guidance appears to be a step in the right direction.
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