U.S. Patent Office Issues Updated Patent Eligibility Guidance

U.S. Patent Office Issues Updated Patent Eligibility Guidance

James Watson

The U.S. Patent Office has issued a supplement to the Patent Eligibility Guidance it released in early 2019. The supplement includes four new examples showing an initial, broad claim that the Office considers to be ineligible for patent protection. The broad claims are followed by narrower claims that the Office considers to be eligible for patenting. The updated examples include: (1) a medical diagnostic and treatment claim, (2) a medical device and pharmaceutical compound claim, (3) an industrial control system claim, and (4) a monitoring and control system claim.

The examples make pretty clear that the U.S. Patent Office considers claim steps that require an action to be taken beyond merely acquiring, processing, and displaying data, and tie that action in some way to the techniques for analyzing data or the result of analysis, will have a better chance of making a claim patent-eligible. They also appear to provide the kind of supporting disclosure that a patent applicant or patentee should include with the application to frame any discussion of why the claimed invention represents a significant advance in its field.

In connection with the control system example, the updated guidance describes that the hardware employed is more reliable than previous configurations. The continuous monitoring, adjustment of operating parameters, and completion of processing enabled by that hardware reduces undesirable properties in the material handled by the system. The guidance indicates that a broad claim focusing on repeatedly obtaining measurements and determining material properties, with nothing more, is directed to a patent ineligible abstract idea, mental process, or law of nature. However, narrower claims that use the calculated properties under specific circumstances to control the system in a particular way, or use the unconventional hardware to obtain the measurements, integrate the invention into a practical application.

The updated guidance is replete with these kinds of ties between what the application describes as the beneficial advance provided by an invention and what is specifically stated in the claims. This approach to drafting the specification and claims generally conforms to the European perspective on patent eligibility, where the features differentiating the claimed invention from the prior art must contribute to some technical effect when compared to the prior art. This kind of clear pathway toward securing patent protection in the U.S. and abroad may bring some measure of stability to an area of law that has been in significant turmoil over the past few years. That said, patent applicants should continue to monitor the case law and not rely exclusively on the guidance from the U.S. Patent Office, as the courts have indicated that they are not bound by the Office’s interpretations of the law.

James C. Watson, Registered Patent Lawyer

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