We recently published the following new materials as part of our subject matter eligibility guidance:

  • October 2019 Patent Eligibility Guidance Update (issued October 17, 2019)
  • Appendix 1: October 2019 examples 43-46 (issued October 17, 2019)
  • Appendix 2: Index of Examples (issued October 17, 2019)
  • Appendix 3: Chart of Subject Matter Eligibility Court Decisions (issued October 17, 2019)

Please follow the links below for these materials.

Subject matter eligibility

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.  

Examination guidance

The Office's current eligibility guidance is found in the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), October 2019 Patent Eligibility Guidance Update (October 2019 Update), 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Procedure (MPEP) Sections 2103, 2104, 2105, 2106 and 2106.03 through 2106.07(c) (except 2106.04(II) which is now superseded).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 or October 2019 Update. 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 recently issued October 2019 Patent Eligibility Update (October 2019 Update) clarifies issues with respect to the 2019 PEG, particularly the groupings of abstract ideas enumerated in the 2019 PEG and the evaluation of whether a judicial exception is integrated into a practical application. The Berkheimer Memo revises the procedures for supporting a conclusion that an additional element (or combination of additional elements) represents well-understood, routine, conventional activity in Step 2B.

Examples

Below are example sets (Examples 37-42 and 43-46) 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.

The index of examplesNEW has been updated to provide an overview of the relevance of Examples 1-46 under the 2019 PEG.

Other materials

These documents provide summaries and additional information for use with the Office's eligibility guidance.

How to comment

We are interested in receiving public feedback on our subject matter eligibility guidance, and particularly our guidance in the October 2019 Update. Feedback on the October 2019 Update, or on any other patent eligibility issue, is welcome on an ongoing basis.

Comments must be submitted through the Federal eRulemaking Portal. To submit comments, navigate to the October 2019 Update docket page by selecting the provided link, or by visiting www.regulations.gov, entering docket number PTO-P-2019-0034 on the home page, and clicking “search.” The site will provide a search results page listing all documents associated with this docket. Once on the docket page, find a reference to this notice and click on the “Comment Now!” icon, complete the required fields, and enter or attach your comments. Attachments to electronic comments will be accepted in ADOBE® portable document format or MICROSOFT WORD® format. Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments.

Archive

You may also view past guidance documents by their date of issuance. Please take note that these documents have been incorporated into the 2019 PEG or the MPEP. Eligibility-related guidance issued prior to the Ninth Edition, Revision 08.2017, of the MPEP (revised January 2018), or that conflicts with the 2019 PEG, should not be relied upon. All versions of the Office's "Eligibility Quick Reference Sheet Identifying Abstract Ideas" (first issued in July 2015 and updated most recently in July 2018) have been superseded by the 2019 PEG.

Contact 

Please contact the Office of Patent Legal Administration for questions regarding the content of this web page.