BREAKING: PTO ISSUES NEW ALICE GUIDANCE

The USPTO today issued revised patent eligibility guidance discussing U.S. Supreme Court decisions such as Alice in the context of the analysis under 35 U.S.C. 101. A possible shorthand for the following new test for patent eligibility may well become "the practical application test":

"Section III explains the revised procedure that will be applied by the USPTO. The procedure focuses on two aspects of Revised Step 2A: (1) whether the claim recites a judicial exception; and (2) whether a recited judicial exception is integrated into a practical application. Only when a claim recites a judicial exception and fails to integrate the exception into a practical application, is the claim “directed to” a judicial exception, thereby triggering the need for further analysis pursuant to the second step of the Alice/Mayo test (USPTO Step 2B). Finally, if further analysis at Step 2B is needed (for example to determine whether the claim merely recites well understood, routine, conventional activity), this 2019 Revised Patent Subject Matter Eligibility Guidance explains that the examiner or administrative patent judge will proceed in accordance with existing USPTO guidance as modified in April 2018."

The new guidance can be found here:

https://s3.amazonaws.com/public-inspection.federalregister.gov/2018-28282.pdf?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=