USPTO Announces Revised Guidance for Determining Subject Matter Eligibility

Brian J Colandreo is a Partner in Holland & Knight's Boston

The U.S. Patent and Trademark Office (USPTO) on Jan. 4, 2019, announced revised guidance for subject matter eligibility under 35 U.S.C. § 101. The USPTO also concurrently announced guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions. The documents took effect on Jan. 7, 2019.

Neither software nor computer programs are explicitly mentioned as being statuary subject matter in the United States patent statutes. However, the law has evolved to address new technologies, and decisions of various U.S. courts (e.g., the U.S. Supreme Court and U.S. Court of Appeals for the Federal Circuit) beginning in the latter part of the 20th century have sought to clarify the boundary between patent-eligible and patent-ineligible subject matter for a number of new technologies including computers and software.