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Patent Office Issues New Examiner Guidance on Subject-Matter Eligibility

By Procopio Partner Pattric J. Rawlins and Attorney Jonathan D. Cheng

The U.S. Patent and Trademark Office (USPTO) has issued its highly anticipated guidance on determining when subject matter is ineligible for patenting. The stated goal of this guidance is to promote clarity, consistency, and predictability in how 35 U.S.C. 101 is applied during patent examination. The new guidance supersedes prior guidance and ostensibly makes it more difficult for examiners to reject subject matter as patent-ineligible under 35 U.S.C. 101.  

Patent owners have long called for the USPTO to address their concerns over examiner guidance under both Section 101 and 35 U.S.C. 112 that was revised following U.S. Supreme Court decisions in Alice and Mayo. USPTO Director Andrei Iancu has promised new guidance for some time, and on January 7, 2019, the Federal Register separately published the Section 101 and Section 112 guidance for public input.

Specifically for Section 101, examiners will now be trained to only classify subject matter as an abstract idea when it falls within one of the following categories: (i) mathematical concepts (e.g., mathematical relationship, formula, equation, or calculation); (ii) certain methods of organizing human activity (e.g., fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, relationships, or interactions between people); or (iii) mental processes (e.g., concepts performed in the human mind). 

Outside of these enumerated categories, an examiner may only classify subject matter as an abstract idea in rare circumstances with express approval from the Technology Center Director.  In addition, even if the subject matter is classified as an abstract idea, the subject matter will be deemed patent-eligible if it integrates the abstract idea into a practical application that applies, relies on, or uses the abstract idea in a manner that imposes a meaningful limitation on the abstract idea.

The USPTO is currently seeking comments on the guidance.  Written comments should be emailed to on or before March 8, 2019.


Pattric J. Rawlins is Chair of Procopio's Software Practice Group and Team Leader for the Intellectual Property Team. He counsels clients on many aspects of intellectual property law, including patent litigation as both plaintiff and defendant, as well as intellectual property counseling to protect patents, trademarks, copyrights, trade secrets and licensing of intellectual property assets. Pattric’s practice focuses on counseling clients regarding intellectual property including procurement strategies and licensing programs for software implemented technologies. He has extensive experience with strategic patent matters including accelerated patent applications, post grant patent matters including ex parte patent reexaminations, inter partes patent reexaminations, reissue patent applications and interferences.

Jonathan D. Cheng is an attorney on Procopio’s Intellectual Property Team. He has drafted and prosecuted hundreds of domestic and foreign patent applications in both pre and post-grant proceedings. Jonathan’s practice focuses on the development and implementation of intellectual property strategies. He is experienced in working with clients of all sizes, from start-ups and individual inventors to large, multinational companies, primarily software, electronics and wireless communications.