On September 24, 2018, at the 46th Annual Meeting of the Intellectual Property Owners Association, Andrei Iancu, Director of the United States Patent and Trademark Office (“USPTO”), announced that the USPTO is considering “revised guidance” on what is patentable subject matter under Section 101 of the Patent Act. In an earlier blog post, I discussed new USPTO guidance involving the possible presence of contested issues of fact in determining whether an invention was “routine, conventional and well-understood.” However, in his September remarks, Director Iancu reveals that the USPTO is considering going much further to take on directly the issue of what it means for a claim to be “directed to” unpatentable subject matter, such as an abstract idea, and how such a claim may be nonetheless patentable. The new guidance would place the USPTO in front of, and possibly in conflict with, the U.S. Federal Circuit Court of Appeals and the U.S. Supreme Court on how to deal with patentability issues involving abstract ideas or other judicially-created exceptions to patentability.
The twin Supreme Court holdings in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014) and Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) establish a two-step test for patent subject matter eligibility under 35 U.S.C. § 101. These steps are also incorporated in the U.S. Patent and Trademark Office (“USPTO”) Manual of Patent Examination Procedure (“MPEP), § 2106. Recent Federal Circuit cases have made clear that there may be underlying issues of fact (precluding summary judgment and requiring a trial) in implementing the second step of the Alice/Mayo test, causing the USPTO to change its guidance to patent examiners.