In a recent edition of our IP newsletter, we introduced the U.S.
Patent and Trademark Office's (USPTO) new guidelines for
subject matter eligibility. Below we provide additional
thoughts and strategies for pursuing patent applications in light
of these new guidelines.
The "2019 Revised Subject Matter Eligibility Guidance"
(Revised Guidance), effective January 7, 2019, varies the analysis
for patent examiners and administrative patent judges in applying
the Alice/Mayo test. Analysis under the Revised
Guidance begins with a consideration of whether the claim
limitations recite a process, a machine, a method of manufacture,
or a composition of matter. This is Step 1 in the
Alice/Mayo test. If a claim is not within one of
these statutory categories, it is ineligible. If the claim is
to a statutory category, per Alice/Mayo Step 2A, the
examiner is to consider whether the claim limitations are directed
to a "judicial exception", namely, an abstract idea, a
law of
