Starting in 2014, we’ve issued guidance explaining how our patent examiners should evaluate claims for patent subject matter eligibility under 35 U.S.C. 101. This guidance was in response to decisions from the U.S. Supreme Court on claims reciting judicial exceptions including abstract ideas, laws of nature, and natural phenomena, as well as feedback received from the public. Since then, we have issued several supplements to this guidance based on judicial decisions and public feedback.
The Office's current eligibility guidance is in Manual of Patent Examination Procedure (MPEP) Sections 2103, 2104, 2105, 2106 and 2106.03 through 2106.07(c). Although the references to the 2014 IEG and its updates should now be directed to the MPEP, please note that no changes have been made to current examination practice with respect to eligibility. Further, because rejections are based on the substantive law, the incorporation of the Office's guidance into the MPEP does not affect pending eligibility rejections or create new grounds of rejection.
- Memorandum - Revising 101 Eligibility Procedure in view of Berkheimer v. HP, Inc. (issued April 19, 2018)NEW
- Training: Well-Understood, Routine, Conventional Activity (posted May 7, 2018)NEW
- Federal Register notice requesting comments on the Berkheimer memorandum and other eligibility guidance (published April 20, 2018)NEW
- Memorandum - Recent Subject Matter Eligibility Decisions: Finjan and Core Wireless (issued April 2, 2018)
Below are example sets illustrating exemplary subject matter eligibility analyses of hypothetical claims and claims drawn from case law. These examples are a teaching tool to assist examiners and the public in understanding how the Office applies the eligibility guidance in certain fact-specific situations.
- Abstract idea examples 1-8 (issued January 27, 2015)
- Nature-based product examples 9-18 (issued December 16, 2014)
- Streamlined examples 19 and 20 (on slides 31 and 32) (posted March 6, 2015)
- Abstract idea examples 21-27 (issued July 30, 2015)
- Life sciences examples 28-33 (issued May 4, 2016)
- Business method examples 34-36 (issued December 15, 2016)
The index of examples provides information about the examples, including subject matter, statutory category, judicial exception (if any), and relevant considerations.
These documents provide summaries and additional information for use with the Office's eligibility guidance.
- Decisions holding claims eligible (quick reference sheet updated May 3, 2018)NEW
- Chart of subject matter eligibility court decisions (updated May 3, 2018)NEW
- Decisions identifying abstract ideas (quick reference sheet updated March 14, 2018)
- Training materials
How to comment
We are interested in receiving public feedback on our subject matter eligibility guidance, and particularly our guidance in the Berkheimer memorandum. To ensure consideration, written comments directed to the Berkheimer memorandum must be received on or before August 20, 2018.
Anyone may submit written comments to Eligibility2018@uspto.gov. Email comments submitted in plain text are preferred, but also may be submitted in ADOBE® portable document format or MICROSOFT WORD® format. Because comments will be available to the public, information that is not desired to be made public, such as an address or a phone number, should not be included in the comments.
Comments are available for public viewing here:
- Comments received in response to the 2014 interim guidance on patent subject matter eligibility
- Comments received in response to the July 2015 update: subject matter eligibility
- Comments received in response to the May 2016 subject matter eligibility update
- Comments received in response to the April 2018 request for comments on the Berkheimer memorandum and other eligibility guidance
The USPTO has held several events to discuss patent subject matter eligibility and receive feedback from interested members of the public.
- Forum on January 21, 2015
- Roundtable discussion on November 14, 2016
- Roundtable discussion on December 5, 2016
guidance documents by their date of issuance, but please take note that these documents have been incorporated into the MPEP