I realize my last post was kind of blah so I figured I’d buckle down and write something more substantive.
By now, I’m sure you’ve heard about the 2014 Interim Guidance on Patent Subject Matter Eligibility. Perhaps you’ve perused through it, or even looked at the subject matter eligibility test for products and processes chart. I saw that this was posted last month on the USPTO website, but I went on a vacation, and didn’t really feel like reading it so I put it off for a couple of weeks. And last night, while I was watching The Millionaire Matchmaker, I decided to finally read it. If you’ve been lazy like me, and you haven’t read it yet, you’re in luck because here’s my quick summary on the new guidance.
This interim guidance supplements the preliminary examination instructions in view of Alice.
Skip the rest of page 74619, skip page 74620, oh look at the chart! Now back to reading on page 74622.
Find out if the claim is directed to a process, machine, manufacture, or composition of matter. If the claim is directed to one of these things, then find out if it is a nature-based product/process or an abstract idea. Look at the examples they give you. Here, the guidance separates nature-based products/processes and abstract ideas.
If your claim is directed to a nature-based product/process, you have to use the “markedly different characteristics analysis” to see if it falls under a “product of nature” exception. To do a “markedly different characteristics analysis,” you have to compare:
1. Nature-based product vs. Naturally occurring counter part in its natural state
OR if there is no naturally occurring counter part, you have to compare:
2. Nature-based product vs. Closest naturally occurring counter part (could be an individual component of the product of nature)
What makes a product of nature markedly different? It should be determined on a case-by-case basis but basically the product of nature should be different in biological or pharmacological functions or activities, chemical and physical properties, phenotype, structure, and form compared to its counterpart. If the nature-based product is markedly different, then your claim qualifies as eligible subject matter.
If your nature-based product is not markedly different, or your claim includes abstract ideas, then you have to find out if your claim has something “significantly more.” What is “significantly more”? Good question. Look at the examples on middle of page 74624. When you’re done looking at that, look at what is not “significantly more” on the top right hand side of that same page.
Remember: Each claim is examined individually, but the claim itself is considered as whole. Why? Because one element in a claim might not be significantly more, but two or more elements together may be significantly more.
A Couple of More Things
Now, turn to page 74625, and you see some more words written here. Here’s what’s important.
1. Elements that are significantly more for one exception will also be significantly more for all exceptions in a claim. Conversely, if the claim is not significantly more for one exception, the claim is ineligible, and you’re done with the analysis.
2. Claims that do tie up any judicial exception do not need full analysis. For example, a plastic chair with wood trim does not require analysis of the nature-based component of the chair.
Pages 74625 through 74632 provide examples from real cases and patents. You can skim through it now, and you’ll see that most of these are landmark cases that you’ve heard of before. Come back to this later when you’re working on patents relevant to these cases.
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