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ARTICLE · 11 JANUARY 2019

New 101 Guidance: Back To The Future?

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In its new 101 Guidance, the USPTO explains that a claim reciting "a judicial exception is not ‘directed to' the judicial exception if the judicial exception is integrated into a practical application of the judicial exception."

United StatesIntellectual Property
Philippe J.C. Signore, Ph.D.
Philippe J.C. Signore, Ph.D.
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In its new 101 Guidance, the USPTO explains that a claim reciting "a judicial exception is not 'directed to' the judicial exception if the judicial exception is integrated into a practical application of the judicial exception. "  The new guidance states that the "Supreme Court has long distinguished between principles themselves (which are not patent eligible) and the integration of those principles into practical applications (which are patent eligible)."  This renewed emphasis on the requirement for a practical application reminds us of a 1994 Federal Circuit case, which stated:

A close analysis of Diehr, Flook, and Benson reveals that the Supreme Court's ... analysis in each of these cases lies an attempt by the Court to explain a rather straightforward concept, namely, that certain types of mathematical subject matter, standing alone, represent nothing more than abstract ideas until reduced to some type of practical application, and thus that subject matter

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