USPTO Issues New Guidelines on Patentable Subject Matter

The USPTO recently issued new guidelines for patent examiners to use in determining whether a claimed invention meets the baseline criteria to be eligible for patent protection. Recent Supreme Court cases have significantly altered these criteria. Section 101 of the Patent Code says:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

The Patent Office also issued a training slideshow to help instruct patent examiners on the new guidelines. If a claim includes any judicially recognized exceptions to § 101: abstract ideas, laws of nature, natural phenomena, and naturally occurring substances. In general, if any embodiment of the "broadest reasonable interpretation" of a claim includes any of these, the claim must also recite enough eligible subject matter (e.g., a non-naturally occurring substance) to satisfy the requirements of § 101.

For the most part, the guidelines and examples appear to be fairly straight-forward and well accepted. One possible exception is the assertion that a claim reciting "gunpowder" would not be eligible because gunpowder could include a combination of naturally occurring substances, potassium nitrate, sulfur, and charcoal. Even though the combination does not exist in nature and has a characteristic (e.g., flammability) that is different in kind or degree from any of the naturally occurring components, it is not a patent eligible invention because none of those components are changed structurally. I find this example problematic as gunpowder undoubtedly was an incredibly important invention of the type that should be covered by the patent laws. Moreover, given the Supreme Court's previous broad statements that § 101 includes "anything under the sun that is made by man," Diamond v. Chakrabaty, would surely include gunpowder.

Fortunately, the guidelines do not have the effect of law and are not binding on the courts, but this is poor consolation for applicants that lack the resources for an expensive appeal to the Patent Trial and Appeal Board before even being able to take the more expensive step of appealing to the Court of Appeals for the Federal Circuit. It appears that the resignation of David Kappos as USPTO Director may have opened the door for those in the Patent Office who had created a culture of patent rejection that resulted in historically low rates of patent allowance prior to his appointment in 2009.