In remarks delivered on September 24, 2018 at the Intellectual Property Owners Association 46th Annual Meeting, USPTO Director Andrei Iancu indicated that further clarification and Examiner training on subject matter eligibility is coming soon. The Director’s comments provide a ray of hope for patent applicants who have struggled with the widely disparate interpretations of the Alice v. CLS Bank decision applied by the USPTO’s examination corps.
Director Iancu framed the problem like this: “Let me put this in my own words: How can a claim be novel enough to pass 102 and nonobvious enough to pass 103, yet lack an “inventive concept” and therefore fail 101? Or, how can a claim be concrete enough so that one of skill in the art can make it without undue experimentation, and pass 112, yet abstract enough to fail 101? How can something concrete be abstract?”
According to Director Iancu, “the proposed PTO guidance would synthesize “abstract ideas” as falling into the following three categories: Mathematical concepts like mathematical relationships, formulas, and calculations; Certain methods of organizing human interactions, such as fundamental economic practices commercial and legal interactions; managing relationships or interactions between people; and advertising, marketing, and sales activities; [and] Mental processes, which are concepts performed in the human mind, such as forming an observation, evaluation, judgment, or opinion. If the claims at issue do not recite subject matter falling into one of these categories, then the 101 analysis is essentially concluded and the claim is eligible.”
The full text of Director Iancu’s comments may be found here.