Written by Daniel DeLuca
In December 2014, the United States Patent and Trademark Office (USPTO), in view of recent case law and comments, updated the guidelines that their examiners use to determine subject matter eligibility under 35 U.S.C. 101. Following the major changes found in the June 25, 2014 update (incorporating Alice Corp. v. CLS Bank International) and the March 4, 2014 update (incorporating Mayo Collaborative Services v Prometheus Laboratories, Inc. and Association for Molecular Pathology v. Myriad Genetics), the most recent update contains noticeably less change.
The most notable change in the December guidelines concerns the analysis for products of nature. For nature-based products one must compare the nature-based limitations and their naturally occurring counterparts in their natural state. If after this comparison, a “markedly different” characteristic was found, then the product will be patent eligible. Under the March 2014 Guidelines, only structural changes were sufficient to show a marked difference. The most recent December 2014 guidelines have revised this analysis by now allowing demonstrations of changes in functional characteristics and other non-structural properties in order to show a marked difference.
The USPTO identified a number of Non-limiting examples of the types of characteristics considered by the courts when determining whether there is a marked difference. These include differences in biological or pharmacological functions or activities (Diamond v. Chakrabarty), chemical and physical properties (Parke-Davis & Co. v. H.K. Mulford Co.), phenotype, including functional and structural characteristics (In re Roslin Inst.), and structure and form, whether chemical, genetic, or physical (Association for Molecular Pathology v. Myriad Genetics).
Under the December 2014 guidelines, claims including a nature-based product are analyzed under step 2A of the Mayo Test to identify whether the claim is directed to (recites) a “product of nature” exception. Step 2B of the analysis is only for claims that show no markedly different characteristics. At this point, to satisfy 2B, the applicant would have to show that the claim recites an addition element that amounts to “significantly more” than the judicial exception to make the product patent eligible.
The USPTO also notes in the December 2014 guidelines that all claims (product and process) with a judicial exception (of any type) are subject to the same steps. However, the analysis now differs slightly from the March 2014 procedure. The application of the analysis is now based on claims “directed to judicial exceptions” (now defined as claims reciting the exception), rather than claims merely “involving” an exception. The USPTO uses nature based products as an example of how this change may be applied. The guidelines explain, process claims that merely use nature-based products are not necessarily subject to an analysis for markedly different characteristics. In other words, claims that recite nature-based product limitations may not be “products of nature” if they are not directed to inventions that clearly seek to tie up any judicial exception. The product when viewed as a whole must be nature based.
Lastly, the USPTO has included DDR Holdings, LLC v. Hotels.com, L.P. in the most recent guidelines. This is the only abstract idea decision from the Federal Circuit since Alice Corp. that resulted in a holding of patent eligibility. In DDR, the claimed invention addressed the problem of retaining website visitors from being diverted from a host’s website to an advertiser’s website by using computer technology to create hybrid sites that looked and felt like the host site while still being associated with the advertiser’s product. Though similar to the patent ineligible claims found in Ultramerical, LLC v. Hulu LLC and WildTangent), also directed to a method of facilitating sale of advertiser’s products over the internet , the court distinguished DDR by holding that unlike in Ultramerical, the claimed invention does not generically recite “use the internet” to perform a known business practice, but instead recites a specific way to automate the creation of a hybrid web page by an outsource provider that uses elements from multiple sources to solve a specific problem faced by many websites on the internet. The addition of this case to the guidelines may be interpreted as a gesture of good faith on the part of the USPTO to help demonstrate their willingness to be receptive to public comment as the guidelines continue to evolve.
The PDF of the most recent version of the USPTO Guidelines may be found at: http://www.gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf