The US Patent and Trademark Office (USPTO) recently issued new guidance on subject matter eligibility that clarifies examination standards under 35 U.S.C. §101 in the wake up the Supreme Court’s recent decision in Alice v. CLS Bank.

This is the third such “examination guidance” since Alice. The Office says that it intends to continue providing updates on eligibility based on developing case law and public comments.

Abstract Ideas

Following Alice and the Supreme Court’s decision in Mayo Collaborative Servs. v. Prometheus Labs., Inc., the USPTO has made significant changes in how it examines patent applications. The patentability of computer software and other computer-enabled inventions is now seen as more problematic in that such inventions are now more likely to be seen as “abstract” and thus not patent-eligible.

The USPTO said that six major themes emerged from comments on the 2014 edition of the Interim Guidance on Subject Matter Eligibility:

  • the need for additional examples of abstract ideas
  • further explanation of the markedly different characteristics (MDC) analysis
  • further information regarding how examiners identify abstract ideas
  • discussion of the prima facie case and the role of evidence with respect to eligibility rejections
  • information regarding application of the 2014 Guidance by patent examiners
  • explanation of the role of preemption in the eligibility analysis, including a discussion of the streamlined analysis

The new Guidelines provide illustrative examples of the types of claims that will be found eligible and ineligible.

An index of all the examples to be used in conjunction with the 2014 Guidance can be found here.


Looking through the examples that the USPTO provides is a helpful way to translate abstract legal concepts into “real world” examples of what types of inventions will and will not be patentable.

As noted above, the USPTO invites public comments on its Guidance. These comments may be submitted via this page.

Leech Tishman’s Intellectual Property Group is based in Pasadena, California with a team of highly-regarded legal professionals with prosecution and litigation expertise in the fields of patent, trademark, copyright, and trade secrets.

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Photo Attribution: “Patent Office relief on the Herbert C. Hoover Building” by Neutrality – Own work. Licensed under Public Domain via Wikimedia Commons.

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