Comments on 2019 Revised Patent Subject Matter Eligibility Guidance

AIPLA applauds the Office for providing a valuable guide for determining patent eligibility and is grateful to the Office for providing what AIPLA believes is a better framework for analyzing subject matter eligibility than was provided by the multiple previous guidance documents. We also appreciate that the Office is providing public access to the examiner training materials as these provide a common framework for understanding how to apply the Guidance. AIPLA is also pleased that the Guidance applies to the PTAB as well as to the examination groups and believes that this will result in a more uniform handling of issues concerning patent-eligible subject matter. AIPLA notes that the Guidance provides a framework for analyzing patent eligibility based on a distillation of the current Supreme Court and Federal Circuit case law covering many different disciplines and, thus, the framework is necessarily imprecise.

AIPLA suggests that further guidance be included with respect to claims directed to diagnostic methods, as the current Guidance does not explicitly address such claims. If the USPTO did not intend to provide guidance for diagnostic method claims, we believe it will be helpful to affirmatively indicate that this January 7, 2019 Guidance does not apply to diagnostic methods.