On January 4th, the U.S. Patent and Trademark Office updated their webpage on subject matter eligibility with two new supplementary documents providing further guidance under 35 U.S.C. §101. The two new documents are useful summaries and references for practitioners and others having an interest in the area. The two documents, which are briefly described below are:

Decisions holding claims eligible and identifying abstract ideas

Chart of subject matter eligibility court decisions 

Decisions Holding Claims Eligible And Identifying Abstract Ideas is a reference sheet with bold graphics that provides guidance for determining when an Abstract Idea can or cannot be eligible for a patent. The Abstract Ideas are grouped based on their concepts, each providing a list of examples and also the court cases (in parentheses) indicating which type of subject matter became a topic of litigation. For example, under “Mathematical Relationships/Formulas,” there are two sub-categories:  abstract ideas “relating to mathematical relationships/formulas,” and abstract ideas for “performing mathematical calculations,” Although no information is given on whether the particular subject matter was deemed patent eligible or not (a suggested improvement the USPTO should consider), the information nevertheless is useful.

Chart Of Subject Matter Eligibility Court Decisions is a handy spread sheet of Federal Circuit court cases on subject matter eligibility since 1979. The sheet summarizes essential details, such as the underlying patents or application numbers, the type of claim, and the judicial conclusion. Most importantly, it also lists the particular judicial exception to subject matter eligibility – namely, Laws of Nature, Natural Phenomena, or Abstract Ideas – at the heart of the case. This table is a very useful reference source for the relevant Federal Circuit case law.  We hope that the document will be continually updated by the USPTO, as there is already a further addition to be made.  On January 10, 2018, the court decided Finjan, Inc. Blue Coat Systems, Inc., where upon de novo  review it affirmed a district court finding that the underlying software-based subject matter was indeed patent eligible.

-Shin Hee Lee and Anthony Sabatelli, PhD, JD

Shin Hee Lee is a Ph.D. Candidate in the Chemistry Department at Yale University. She is currently associated with the Yale Energy Sciences Institute, where she specializes in organic synthesis of novel light-harvesting dye molecules for solar cells. Prior to attending Yale, Shin Hee obtained her B.S. in Chemistry with High Honors at the University of Michigan – Ann Arbor, during which she published patents and papers on developing synthetic methodologies for fluorinated small molecules.

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