The 11-page document, with another 22 pages of examples, is designed to flesh out guidance the office issued to examiners in December. It does so in part by giving more examples, based on new case law, of what constitutes an abstract idea, a category the office breaks down into broad groups like "fundamental economic practices" and "an idea 'of itself.'"
The guidance also appears to give patent examiners broad authority to decide eligibility in many respects, which will likely continue a trend since the U.S. Supreme Court's decisions in Alice and Mayo of examiners rejecting many patents for claiming only abstract ideas, attorneys say.
"The patent office is overreaching and overinterpreting and overexpanding what I call the call the cult of the abstract idea," said Warren Woessner of Schwegman Lundberg & Woessner PA.
For instance, the new guidance document refers to "an idea 'of itself'' " as a patent-ineligible abstract ideas that involves an idea standing alone, such as an "uninstantiated concept, plan or scheme," as well as a mental process that can be performed by the human mind or a pen and paper.
The office gives examples of inventions that would fall into that category, such as data recognition and storage and concepts relating to processes of comparing data that can be performed mentally.
"If that's the law, an awful lot of stuff is abstract," Woessner said. He noted that since the high court ruled in Alice that abstract ideas implemented using a computer are not patent-eligible, the office has a rejected a high number of applications on that basis.
With Thursday's guidance, "things are getting worse, they're not getting better," he said.
In addition to an idea of itself, the guidance sets out three other categories of things that could be considered abstract ideas, largely drawn from recent court rulings. One is fundamental economic practices like hedging and mitigating settlement risk, which the office notes need only be basic or foundational to be abstract, not necessarily old or well-known.
The other categories are certain methods of organizing human activity, such as using advertising as currency or processing loan information, and mathematical relationships or formulas, like algorithms or methods of managing a life insurance policy.
The way the categories are framed is so broad that it appears to be an invitation to examiners to reject many potential inventions as abstract ideas, said Robert Sachs of Fenwick & West LLP.
"You could lump anything into these categories," he said. "This will be a cheat sheet that examiners can pin to their wall, look at what category something falls into and reject it."
Patent examiners already reject business method patent applications at a high rate in the wake of recent Supreme Court decisions, and the guidance could result a higher rates of rejection for software patents as well, Sachs said.
"If it just gets boiled down to these bullet points and examiners start using this aggressively, it's going to be very difficult for applicants," he said.
The USPTO guidance appears to treat court decisions, particularly from the Supreme Court, as setting down black-letter law that everything in certain subject areas is an unpatentable abstract idea, but that may be going too far, said Kevin Noonan of McDonnell Boehnen Hulbert & Berghoff LLP.
"The courts and the patent office are really being much more stringent than maybe the court intended them to be," he said. "There's a belief that these things have been mandated by the court, and I'm not sure that they have."
The new guidance also includes explanations for how examiners should evaluate patent applications that attorneys say will make life difficult for patent prosecutors.
One deals with the issue of preemption, an idea cited by the Supreme Court in its decisions finding patents to be ineligible that holds that allowing patents on abstract ideas is not allowed because it could preempt all other uses of the idea.
The USPTO said that preemption is not a stand-alone test for patent eligibility but is instead "inherent in the two‐part framework" the high court set in Mayo and Alice. That test requires courts and examiners to determine whether a patent claims only an abstract idea, and if so, whether it contains something "significantly more" than the idea itself.
"It should be kept in mind, however, that while a preemptive claim may be ineligible, the absence of complete preemption does not guarantee that a claim is eligible," the office said in Thursday's guidance.
That presents a challenge for patent applicants. Many attorneys understood the Supreme Court's concern to be ensuring that a claim does not preempt all other uses of an abstract idea. They therefore defended arguments that the patent covers an abstract idea by pointing out ways the concept could be performed other than the one in the patent, in order to show that it does not preempt all uses.
"The patent office appears to be saying that's not enough of an argument. It's something to be considered, but it's not the end of the argument," said Michelle Holoubek of Sterne Kessler Goldstein & Fox PLLC.
By effectively saying that examiners can ignore whether a patent preempts all uses of an idea, the USPTO has taken away a safeguard that prevented effectively any patent that implicates an abstract idea from being found ineligible, Sachs said.
"If you remove preemption as a constraint, it opens the floodgates for everything being rejected," he said.
The basic questions examiners are supposed to ask when determining eligibility, whether the patent involves an abstract idea and whether the invention claims something "significantly more" are effectively undefined, he noted. That makes the issue of whether the invention preempts other uses of the idea an important consideration.
"If you're going to have a test that is very squishy, you need to have a safety valve and a way of validating that you got the right outcome," he said.
The guidance also explains that when examiners reject an application as ineligible because it has elements that are simply routine and conventional, they can rely on their own expertise in the art and need not cite evidence. The office draws a comparison with the courts, which can take "judicial notice" of what would be routine, something that presents another hurdle for applicants, Holoubek said.
"For practitioners looking for a way to argue that a patent is eligible, they're going to have a hard time if the examiners are not required to explain why something is routine and conventional," she said. "It essentially become a he said/she said."
Some attorneys welcomed the guidance, since it provides more data points for examiners. Jordan Sigale of Dunlap Codding noted that since the Supreme Court rulings, examiners have been gun-shy and haven't allowed many patents for fear they'll let something through that covers only an abstract ideas.
Having more examples of what is abstract gives attorneys a way to push back and examiners a clearer sense of the boundaries of eligibility, he said, and "the examining corps is going to feel a little less worried saying something is not an abstract idea, because it's easier to say what is an abstract idea."
Having more examples is useful, even though it doesn't fully answer the thorny question of what an abstract idea is, Holoubek said.
"My impression is that this is a good step forward," she said. "There are things that will be challenging for practitioners, but overall, it's nice to see that the patent office is generally trying to be helpful and move the process along."
--Editing by Katherine Rautenberg and Patricia K. Cole.
