Our subject matter eligibility guidance explains how Office personnel including patent examiners should evaluate claims for patent subject matter eligibility under 35 U.S.C. 101.
The Office's current eligibility guidance found in the recently issued 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) and in Manual of Patent Examination Procedure (MPEP) Sections 2103, 2104, 2105, 2106 and 2106.03 through 2106.07(c) (except 2106.04(II) which is now superseded). The 2019 PEG supersedes MPEP section 2106.04(II) along with any other portion of the MPEP that conflicts with the 2019 PEG. This chart discusses the section of the MPEP that are affected by the 2019 PEG. The 2019 PEG revises the procedures for determining whether a claim is directed to a judicial exception (Step 2A in the Office's eligibility framework).
- The 2019 Revised Patent Subject Matter Eligibility Guidance (issued January 7, 2019)NEW
- Memorandum - Recent Subject Matter Eligibility Decision: Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals (issued June 7, 2018)
- Memorandum - Revising 101 Eligibility Procedure in view of Berkheimer v. HP, Inc. (issued April 19, 2018)
- Training: Well-Understood, Routine, Conventional Activity (posted May 7, 2018)
- Federal Register notice requesting comments on the Berkheimer memorandum and other eligibility guidance (published April 20, 2018)
- Memorandum - Recent Subject Matter Eligibility Decisions: Finjan and Core Wireless (issued April 2, 2018)
Below is an example set (Examples 37 through 42) illustrating exemplary subject matter eligibility analyses of claims under the 2019 PEG. These examples are a teaching tool to assist examiners and the public in understanding how the Office applies the 2019 PEG in certain fact-specific situations. The analysis in the examples issued prior to the 2019 PEG (Examples 1-36) will provide useful illustrations of eligible subject matter across a range of technologies. All claims indicated as eligible in these examples are still eligible under the 2019 PEG.
- 2019 PEG Examples 37 through 42 (issued January 7, 2019)NEW
- 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 will be updated at a later date.
These documents provide summaries and additional information for use with the Office's eligibility guidance.
- Form paragraphs (posted January 8, 2019)NEW
- Frequently Asked Questions (posted January 8, 2019)NEW
- Sample Rejection (posted January 8, 2019)NEW
- Decisions holding claims eligible (quick reference sheet updated July 23, 2018)
- Chart of subject matter eligibility court decisions (updated July 23, 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 2019 PEG. To ensure consideration, written comments directed to the 2019 PEG must be received on or before March 8, 2019.
Anyone may submit written comments to Eligibility2019@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.
Previous comments we received 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
Please contact the Office of Patent Legal Administration for questions regarding the content of this web page.