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 2014 interim guidance on patent subject matter eligibility (2014 IEG) sets forth a two-part analysis for claims reciting judicial exceptions in view of recent decisions by the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit.
- The July 2015 update on subject matter eligibility updates the 2014 IEG. It reflects public comments and assists examiners when applying the 2014 IEG during the patent examination process.
- The May 2016 subject matter eligibility update provides information to the examining corps on best practices for formulating a subject matter eligibility rejection and evaluating the applicant’s response.
- Memoranda discussing subject matter eligibility decisions from the U.S. Court of Appeals for the Federal Circuit:
- Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A.V. Automotive, LLC (May 19, 2016)
- Rapid Litigation Management v. CellzDirect and Sequenom v. Ariosa (July 14, 2016)
- McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc. and BASCOM Global Internet Services v. AT&T Mobility LLC (November 2, 2016)
- Manual of Patent Examination Procedure (MPEP) Sections 2103, 2104, 2105 and 2106
You may also view guidance documents by their date of issuance.
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 2014 IEG.
- Summary of the 2014 IEG (quick reference sheet issued December 2014)
- Identifying abstract ideas and summary of the July 2015 update (quick reference sheet issued July 2015)
- Decisions holding claims eligible and identifying abstract ideas (quick reference sheet updated December 5, 2017)NEW
- Chart of subject matter eligibility court decisions (updated December 5, 2017)NEW
- Training materials
How to comment
We are interested in receiving public feedback on this guidance, particularly the May 2016 subject matter eligibility update and the life sciences example . The comment period is open-ended, and comments will be accepted on an ongoing basis.
Anyone may submit written comments to firstname.lastname@example.org. 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
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