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In recent remarks at the Intellectual Property Owners Association’s annual meeting, USPTO Director Andrei Iancu proposed a change to how USPTO examiners determine whether a claimed invention satisfies the patent eligibility requirements of 35 USC § 101. Director Iancu emphasized the distinction between categories of invention under § 101 and conditions for patentability under §§ 102, 103, and 112. According to Director Iancu, recent case law has blurred this distinction:

“How can a claim be novel enough to pass 102 and nonobvious enough to pass 103, yet lack an ‘inventive concept’ and therefore fail 101? Or, how can a claim be concrete enough so that one of skill in the art can make it without undue experimentation, and pass 112, yet abstract enough to fail 101? How can something concrete be abstract?”

To restore the categories vs. conditions distinction and remedy the confusion surrounding § 101, Director Iancu proposed four questions for determining whether a claim is patent-eligible:

1.    Does the claimed invention fall into one of the four categories recited in § 101—process, machine, manufacture and composition of matter? If no, the claim fails § 101. If yes, move to question 2. This is consistent with the current § 101 test.

2.    Does the claim recite a basic tool of scientific and technological work—i.e., a law of nature, a natural phenomenon, or an abstract idea? Director Iancu listed three categories of abstract ideas:

    • mathematical concepts like mathematical relationships, formulas and calculations,
    • certain methods of organizing human interactions, such as fundamental economic practices commercial and legal interactions; managing relationships or interactions between people; and advertising, marketing, and sales activities, and
    • mental processes, which are concepts performed in the human mind, such as forming an observation, evaluation, judgment, or opinion.

If the claim does not recite one of these “basic tools,” it satisfies § 101. If it does, move to question 3.

3.    Is the claim “directed to” the basic tool, or does the claim integrate the basic tool into a practical application. If the former, move to question 4. If the latter, the claim satisfies § 101. Notably, “it does not matter if the ‘integration’ steps are arguably ‘conventional’; as long as the integration is into a practical application, then the 101 analysis is concluded.”

4.    Does the claim recite additional elements that amount to significantly more than the basic tool? If yes, the claim satisfies § 101. If no, it fails § 101.

Questions 2 and 3 clarify the first part of the Mayo/Alice test, and question 4 is identical to the second part of the Mayo/Alice test.

According to Director Iancu, using these four questions to determine whether a claimed invention fits into a patent-eligible category leaves §§ 102, 103, and 112 to determine whether a claim meets the conditions for patentability:

“If something is not inventive, then invalidate it under 102 or 103. If something is indefinite, or too broad to be fully enabled or described, then invalidate it under 112.

“We have decades of case law from the courts and millions of examinations at the PTO which guide us in our 102, 103, and 112 analyses. People know these standards and how to apply these well-defined statutory requirements.”

Keep an eye out for new guidance from the USPTO on patent eligibility under § 101. Director Iancu’s categories vs. conditions distinction could bring helpful clarity to a confusing area of patent law.


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