74618 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations 

distribution, or use of energy. Because 

this rule is exempt from review under 

Executive Order 12866 and is not 

expected to have a significant adverse 

effect on the supply, distribution, or use 

of energy, a Statement of Energy Effects 

is not required. 

National Environmental Policy Act 

This rule does not require an 

environmental impact statement 

because section 702(d) of SMCRA (30 

U.S.C. 1292(d)) provides that agency 

decisions on proposed State regulatory 

program provisions do not constitute 

major Federal actions within the 

meaning of section 102(2)(C) of the 

National Environmental Policy Act (42 

U.S.C. 4332(2)(C) et seq). 

Paperwork Reduction Act 

This rule does not contain 

information collection requirements that 

require approval by OMB under the 

Paperwork Reduction Act (44 U.S.C. 

3501 et seq.). 

Regulatory Flexibility Act 

The Department of the Interior 

certifies that this rule will not have a 

significant economic impact on a 

substantial number of small entities 

under the Regulatory Flexibility Act (5 

U.S.C. 601 et seq.). The State submittal, 

which is the subject of this rule, is based 

upon counterpart Federal regulations for 

which an economic analysis was 

prepared and certification made that 

such regulations would not have a 

significant economic effect upon a 

substantial number of small entities. In 

making the determination as to whether 

this rule would have a significant 

economic impact, the Department relied 

upon the data and assumptions for the 

counterpart Federal regulations. 

Small Business Regulatory Enforcement 

Fairness Act 

This rule is not a major rule under 5 

U.S.C. 804(2), of the Small Business 

Regulatory Enforcement Fairness Act. 

This rule: 

a. Does not have an annual effect on 

the economy of $100 million. 

b. Will not cause a major increase in 

costs or prices for consumers, 

individual industries, Federal, State, or 

local government agencies, or 

geographic regions. 

c. Does not have significant adverse 

effects on competition, employment, 

investment, productivity, innovation, or 

the ability of U.S. based enterprises to 

compete with foreign-based enterprises. 

This determination is based upon the 

fact that the State submittal which is the 

subject of this rule is based upon 

counterpart Federal regulations for 

which an analysis was prepared and a 

determination made that the Federal 

regulation was not considered a major 

rule. 

Unfunded Mandates 

This rule will not impose an 

unfunded Mandate on State, local, or 

tribal governments or the private sector 

of $100 million or more in any given 

year. This determination is based upon 

the fact that the State submittal, which 

is the subject of this rule, is based upon 

counterpart Federal regulations for 

which an analysis was prepared and a 

determination made that the federal 

regulation did not impose an unfunded 

mandate. 

List of Subjects in 30 CFR Part 934 

Intergovernmental relations, Surface 

mining, Underground mining. 

Dated: July 1, 2014. 

Ervin Barchenger, 

Acting Director, Western Region. 

Editorial note: This document was 

received for publication by the Office of 

Federal Register on December 10, 2014. 

For the reasons set out in the 

preamble, 30 CFR part 934 is amended 

as set forth below: 

PART 934—NORTH DAKOTA 

■ 1. The authority citation for part 934 

continues to read as follows: 

Authority: 30 U.S.C. 1201 et seq. 

■ 2. Section 934.15 is amended in the 

table by adding a new entry in 

chronological order by ‘‘Date of Final 

Publication’’ to read as follows: 

§ 934.15 Approval of North Dakota 

regulatory program amendments. 

* * * * * 

Original amendment submission date Date of final publication Citation/description 

*******

November 14, 2012 ............................................................ December 16, 2014 ........................................................... NDAC 69–05.2–05–02 

NDAC 69–05.2–05–08 

NDAC 69–05.2–06–01 

NDAC 69–05.2–06–02 

NDAC 69–05.2–10–01 

NDAC 69–05.2–10–03 

NDAC 69–05.2–10–07 

NDAC 69–05.2–10–08 

NDAC 69–05.2–10–09 

■ 3. Section 934.16 is republished to 

read as follows: 

§ 934.16 Required program amendments. 

Pursuant to 30 CFR 732.17(f)(1), North 

Dakota is required to submit to OSM by 

the specified date the following written, 

proposed program amendment, or a 

description of an amendment to be 

proposed that meets the requirements of 

SMCRA and 30 CFR Chapter VII and a 

timetable for enactment that is 

consistent with North Dakota’s 

established administrative or legislative 

procedures. 

(a)–(cc) [Reserved] 

[FR Doc. 2014–29384 Filed 12–15–14; 8:45 am] 

BILLING CODE 4310–05–P 

DEPARTMENT OF COMMERCE 

United States Patent and Trademark 

Office 

37 CFR Part 1 

[Docket No. PTO–P–2014–0058] 

2014 Interim Guidance on Patent 

Subject Matter Eligibility 

AGENCY: United States Patent and 

Trademark Office, Commerce. 


tkelley on DSK3SPTVN1PROD with RULES
Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations 74619 

1Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 

__, 134 S. Ct. 2347 (2014). 

2This analysis differs from the March 2014 

Procedure in certain respects. Note, for example, 

the test for determining whether a claim is directed 

to a ‘‘product of nature’’ exception is separated from 

the analysis of whether the claim includes 

significantly more than the exception. Also, the 

application of the overall analysis is based on 

claims directed to judicial exceptions (defined as 

claims reciting the exception, i.e., set forth or 

described), rather than claims merely ‘‘involving’’ 

an exception. For instance, process claims that 

merely use a nature-based product are not 

necessarily subject to an analysis for markedly 

different characteristics. Additionally, the markedly 

different analysis focuses on characteristics that can 

include a product’s structure, function, and/or other 

properties as compared to its naturally occurring 

counterpart in its natural state. 

3Association for Molecular Pathology v. Myriad 

Genetics, Inc., 569 U.S. __, 133 S. Ct. 2107 (2013). 

4 Mayo Collaborative Serv. v. Prometheus Labs., 

Inc., 566 U.S. __, 132 S. Ct. 1289 (2012). 

5The Court of Appeals for the Federal Circuit has 

a number of pending appeals that could result in 

further refinements to the eligibility guidance, 

including for example, University of Utah Research 

Foundation v. Ambry Genetics Corp. (In re BRCA1- 

& BRCA2-Based Hereditary Cancer Test Patent 

Litigation), No. 14–1361 (Fed. Cir. filed Mar. 18, 

2014), and Ariosa Diagnostics, Inc. v. Sequenom, 

Inc., No. 14–1139 (Fed. Cir. filed Dec. 4, 2013). 

ACTION: Examination guidance; request 

for comments. 

SUMMARY: The United States Patent and 

Trademark Office (USPTO or Office) has 

prepared interim guidance (2014 

Interim Guidance on Patent Subject 

Matter Eligibility, called ‘‘Interim 

Eligibility Guidance’’) for use by USPTO 

personnel in determining subject matter 

eligibility under 35 U.S.C. 101 in view 

of recent decisions by the U.S. Supreme 

Court (Supreme Court). This Interim 

Eligibility Guidance supplements the 

June 25, 2014, Preliminary Examination 

Instructions in view of the Supreme 

Court decision in Alice Corp. (June 2014 

Preliminary Instructions) and 

supersedes the March 4, 2014, 

Procedure For Subject Matter Eligibility 

Analysis Of Claims Reciting Or 

Involving Laws Of Nature/Natural 

Principles, Natural Phenomena, And/Or 

Natural Products (March 2014 

Procedure) issued in view of the 

Supreme Court decisions in Myriad and 

Mayo. The USPTO is seeking public 

comment on this Interim Eligibility 

Guidance along with additional 

suggestions on claim examples for 

explanatory example sets. 

DATES: Effective Date: This Interim 

Eligibility Guidance is effective on 

December 16, 2014. This Interim 

Eligibility Guidance applies to all 

applications filed before, on or after 

December 16, 2014. 

Comment Deadline Date: To be 

ensured of consideration, written 

comments must be received on or before 

March 16, 2015. 

ADDRESSES: Comments on this Interim 

Eligibility Guidance must be sent by 

electronic mail message over the 

Internet addressed to: 2014_interim_

guidance@uspto.gov. Electronic 

comments submitted in plain text are 

preferred, but also may be submitted in 

ADOBE® portable document format or 

MICROSOFT WORD® format. The 

comments will be available for viewing 

via the Office’s Internet Web site (http:// 

www.uspto.gov). Because comments will 

be made available for public inspection, 

information that the submitter does not 

desire to make public, such as an 

address or phone number, should not be 

included in the comments. 

FOR FURTHER INFORMATION CONTACT: Raul 

Tamayo, Senior Legal Advisor, Office of 

Patent Legal Administration, by 

telephone at 571–272–7728, or Michael 

Cygan, Senior Legal Advisor, Office of 

Patent Legal Administration, by 

telephone at 571–272–7700. 

SUPPLEMENTARY INFORMATION: Section 

2106 of the Manual of Patent Examining 

Procedure (MPEP) sets forth guidance 

for use by USPTO personnel in 

determining subject matter eligibility 

under 35 U.S.C. 101. See MPEP 2106 

(9th ed. 2014). The USPTO has prepared 

this Interim Eligibility Guidance for use 

by USPTO personnel in determining 

subject matter eligibility under 35 

U.S.C. 101 in view of recent decisions 

by the Supreme Court. The following 

Interim Eligibility Guidance on patent 

subject matter eligibility under 35 

U.S.C. 101 supplements the June 25, 

2014, Preliminary Examination 

Instructions in view of the Supreme 

Court Decision in Alice Corporation Pty. 

Ltd. v. CLS Bank International, et al.1

(June 2014 Preliminary Instructions) 

and supersedes the March 4, 2014, 

Procedure For Subject Matter Eligibility 

Analysis Of Claims Reciting Or 

Involving Laws Of Nature/Natural 

Principles, Natural Phenomena, And/Or 

Natural Products (March 2014 

Procedure) 2 issued in view of the 

Supreme Court decisions in Association 

for Molecular Pathology v. Myriad 

Genetics, Inc.3 and Mayo Collaborative 

Services v. Prometheus Laboratories 

Inc.4 Implementation of examination 

guidance on eligibility will be an 

iterative process continuing with 

periodic supplements based on 

developments in patent subject matter 

eligibility jurisprudence 5 and public 

feedback. 

The USPTO is seeking written 

comments on this guidance, as well as 

additional suggestions for claim 

examples to use for examiner training. 

Further, the USPTO plans to hold a 

public forum in mid-January 2015 in 

order to discuss the guidance and next 

steps and to receive additional oral 

input. When the date and location are 

finalized, notice of the forum will be 

provided on the Office’s Internet Web 

site (http://www.uspto.gov). 

This Interim Eligibility Guidance does 

not constitute substantive rulemaking 

and does not have the force and effect 

of law. This Interim Eligibility Guidance 

sets out the Office’s interpretation of the 

subject matter eligibility requirements of 

35 U.S.C. 101 in view of recent 

decisions by the Supreme Court and the 

U.S. Court of Appeals for the Federal 

Circuit (Federal Circuit), and advises the 

public and Office personnel on how 

these court decisions impact the 

provisions of MPEP 2105, 2106 and 

2106.01. This Interim Eligibility 

Guidance has been developed as a 

matter of internal Office management 

and is not intended to create any right 

or benefit, substantive or procedural, 

enforceable by any party against the 

Office. Rejections will continue to be 

based upon the substantive law, and it 

is these rejections that are appealable. 

Failure of Office personnel to follow 

this Interim Eligibility Guidance is not, 

in itself, a proper basis for either an 

appeal or a petition. 

This Interim Eligibility Guidance 

offers a comprehensive view of subject 

matter eligibility in line with Alice 

Corp, Myriad, Mayo, and the related 

body of case law, and is responsive to 

the public comments received 

pertaining to the March 2014 Procedure 

and the June 2014 Preliminary 

Instructions (see the Notice of Forum on 

the Guidance for Determining Subject 

Matter Eligibility of Claims Reciting or 

Involving Laws of Nature, Natural 

Phenomena, and Natural Products, 79 

FR 21736 (Apr. 17, 2014) and the 

Request for Comments and Extension of 

Comment Period on Examination 

Instruction and Guidance Pertaining to 

Patent-Eligible Subject Matter, 79 FR 

36786 (June 30, 2014)). In conjunction 

with this Interim Eligibility Guidance, a 

set of explanatory examples relating to 

nature-based products is being released 

to replace the prior examples issued 

with the March 2014 Procedure and the 

related training. The explanatory 

examples relating to nature-based 

products address themes raised in the 

public comments and adopt many 

suggestions from the comments. 

Additional explanatory example sets 

relating to claims that do and do not 

amount to significantly more than a 

judicial exception are being developed 

and will be issued at a future date, 

taking into account suggestions already 

received from the public comments, 


tkelley on DSK3SPTVN1PROD with RULES
74620 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations 

6To the extent that MPEP 2105 suggests that mere 

‘‘human intervention’’ necessarily results in eligible 

subject matter, it is superseded by this Interim 

Eligibility Guidance. As explained herein, if human 

intervention has failed to confer markedly different 

characteristics on a product derived from nature, 

that product is a judicial exception (a product of 

nature exception). See generally Myriad; In re 

Roslin Inst. (Edinburgh), 750 F.3d. 1333 (Fed. Cir. 

2014). 

future public comments, and any further 

judicial developments. 

The June 2014 Preliminary 

Instructions superseded MPEP sections 

2106(II)(A) and 2106(II)(B). MPEP 2105 

is also superseded by this Interim 

Eligibility Guidance to the extent that it 

suggests that ‘‘mere human 

intervention’’ necessarily results in 

eligible subject matter. MPEP 2106.01 is 

additionally now superseded with this 

interim guidance. Examiners should 

continue to follow the MPEP for all 

other examination instructions. The 

following sections pertain to examining 

for patent subject matter eligibility with 

details on determining what applicant 

invented and making a rejection under 

35 U.S.C. 101 and should be reviewed 

closely as they are not duplicated in this 

Interim Eligibility Guidance: 

• MPEP 2103: Patent Examination 

Process 

D 2103(I): Determine What Applicant 

Has Invented and Is Seeking to 

Patent 

D 2103(II): Conduct a Thorough Search 

of the Prior Art 

D 2103(III): Determine Whether the 

Claimed Invention Complies With 

35 U.S.C. 101 

D 2103(IV): Evaluate Application for 

Compliance With 35 U.S.C. 112 

D 2103(V): Determine Whether the 

Claimed Invention Complies With 

35 U.S.C. 102 and 103 

D 2103(VI): Clearly Communicate 

Findings, Conclusions, and Their 

Bases 

• MPEP 2104: Patentable Subject Matter 

• MPEP 2105: Patentable Subject 

Matter—Living Subject Matter 6

• MPEP 2106: Patent Subject Matter 

Eligibility 

D 2106(I): The Four Categories of 

Statutory Subject Matter 

D 2106(II): Judicial Exceptions to the 

Four Categories (not subsections 

(II)(A) and (II)(B)) 

D 2106(III): Establish on the Record a 

Prima Facie Case 

The current version of the MPEP (9th 

ed., March 2014) incorporates patent 

subject matter eligibility guidance 

issued as of November 2013. 

This Interim Eligibility Guidance is 

divided into the following sections: 

Flowchart: Eligibility Test for 

Products and Processes; 

Part I: Two-part Analysis for Judicial 

Exceptions; 

Part II: Complete Examination; 

Part III: Sample Analysis; and 

Part IV: Summaries of Court Decisions 

Relating to Laws of Nature, Natural 

Phenomena, and Abstract Ideas. 

The following flowchart illustrates the 

subject matter eligibility analysis for 

products and processes to be used 

during examination for evaluating 

whether a claim is drawn to patenteligible subject matter. It is recognized 

that under the controlling legal 

precedent there may be variations in the 

precise contours of the analysis for 

subject matter eligibility that will still 

achieve the same end result. The 

analysis set forth herein promotes 

examination efficiency and consistency 

across all technologies. 


tkelley on DSK3SPTVN1PROD with RULES
Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations 74621 

2014 Interim Eligibility Guidance: In 

accordance with the existing two-step 

analysis for patent subject matter 

eligibility under 35 U.S.C. 101 

explained in MPEP 2106, the claimed 

invention (Step 1) ‘‘must be directed to 

one of the four statutory categories’’ and 

(Step 2) ‘‘must not be wholly directed to 

subject matter encompassing a judicially 

recognized exception.’’ Referring to the 

attached flowchart titled Subject Matter 

Eligibility Test for Products and 

Processes, Step 1 is represented in 

diamond (1), which is explained in 

MPEP 2106(I). Step 2 is represented in 

diamonds (2A) and (2B) and is the 

subject of this Interim Eligibility 

Guidance. Step 2 is the two-part 


tkelley on DSK3SPTVN1PROD with RULESER16DE14.031</GPH>

SUBJECT MATTER ELIGIBILITY TEST FOR 

PRODUCTS AND PROCESSES 

PRIOR TO EVALUATING A CLAIM FOR PATENTABILITY, ESTABLISH THE 

BROADEST REASONABLE INTERPRETATION OF THE CLAIM 

ANALY2E THE CLAIM AS A WHOLE WHEN EVALUATING FOR PATENTABILITY. 

( Step 1) 

IS THE CLAIM TO 

A PROCESS, MACHINE, 

MANUFACTURE OR 

COMPOSITION OF 

MATTER? 

YES 

(Step 2A) 

[PART 1 Mayo test] 

NO IS THE CLAIM DIRECTED 

YES 

CLAIM QUALIFIES 

AS ELIGIBLE SUBJECT 

MATTER UNDER 

35 usc 101 

TO A LAW OF NATURE, A 

NATURAL PHENOMENON, OR AN 

ABSTRACT IDEA 

( JUDICIALLY RECOGNIZED 

EXCEPTIONS) ? 

YES 

(Step 2B) 

[PART 2 Mayo test] 

DOES THE CLAIM RECITE 

ADDITIONAL ELEMENTS THAT 

AMOUNT TO SIGNIFICANTLY 

MORE THAN THE JUDICIAL 

EXCEPTION? 

NO 

NO 

CLAIM IS NOT 

ELIGIBLE SUBJECT 

MATTER 

UNDER 35 USC 101 

IN ACCORDANCE WITH COMPACT PROSECUTION, ALONG WITH DETERMINING ELIGIBILITY, ALL 

CLAIMS ARE TO BE FULLY EXAMINED UNDER EACH OF THE OTHER PATENTABILITY 

REQUIREMENTS: 35 USC §§ 102, 103, 112, and 101 ( UTILITY, INVENTORSHIP, DOUBLE 

PATENTING) AND NON- STATUTORY DOUBLE PATENTING. 

Notable changes from prior guidance: 

• All daims ( product and process) with a judidal exception ( any type) are subject to the same steps. 

• Oaims induding a nature- based product are analyzed in Step 2A to identify whether the daim is directed 

to ( recites) a "product of nature" exception. This analysis compares the nature- based product in the daim 

to its naturally occurring counterpart to identify markedly different characteristics based on structure, function, 

and/ or properties. The analysis proceeds to Step 2B only when the daim is directed to an exception (when 

no markedly different characteristics are shown) . 
74622 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations 

7Alice Corp., 134 S. Ct. at 2355. 

8 Mayo, 132 S. Ct. at 1301 (‘‘[E]ven though 

rewarding with patents those who discover new 

laws of nature and the like might well encourage 

their discovery, those laws and principles, 

considered generally, are ‘the basic tools of 

scientific and technological work.’ And so there is 

a danger that the grant of patents that tie up their 

use will inhibit future innovation premised upon 

them, a danger that becomes acute when a patented 

process amounts to no more than an instruction to 

‘apply the natural law,’ or otherwise forecloses 

more future invention than the underlying 

discovery could reasonably justify’’ (quoting 

Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). 

9An invention is not rendered ineligible for 

patent simply because it involves an abstract 

concept. Applications of such concepts ‘‘to a new 

and useful end,’’ remain eligible for patent 

protection. Alice Corp., 134 S.Ct. at 2354 (quoting 

Benson, 409 U.S. at 67). 

10O’Reilly v. Morse, 56 U.S. 62 (1853). 

11Tilghman v. Proctor, 102 U.S. 707 (1881). 

12Alice Corp., 134 S. Ct. at 2355–56. 

13Bilski v. Kappos, 561 U.S. 593 (2010). 

14 buySAFE, Inc. v. Google, Inc., ___ F.3d ___, 112 

USPQ2d 1093 (Fed. Cir. 2014). 

15Ultramercial, LLC v. Hulu, LLC and 

WildTangent, ___ F.3d ___, 112 USPQ2d 1750 (Fed. 

Cir. 2014). 

16 Dealertrack Inc. v. Huber, 674 F.3d 1315 (Fed. 

Cir. 2012). 

17SmartGene, Inc. v. Advanced Biological Labs., 

SA, 555 Fed. Appx. 950 (Fed. Cir. 2014) 

(nonprecedential). 

18Cyberfone Sys. v. CNN Interactive Grp., 558 

Fed. Appx. 988 (Fed. Cir. 2014) (nonprecedential). 

19 Digitech Image Tech., LLC v. Electronics for 

Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014). 

20Planet Bingo, LLC v. VKGS LLC, ___ Fed. Appx. 

___ (Fed. Cir. 2014) (nonprecedential). 

21 Diamond v. Diehr, 450 U.S. 175 (1981). 

22Parker v. Flook, 437 U.S. 584 (1978). 

23 Mackay Radio & Tel. Co. v. Radio Corp. of Am., 

306 U.S. 86 (1939). 

24 Benson, 409 U.S. at 63. 

analysis from Alice Corp.7 (also called 

the Mayo test) for claims directed to 

laws of nature, natural phenomena, and 

abstract ideas (the judicially recognized 

exceptions). 

I. Two-Part Analysis for Judicial 

Exceptions 

A. Flowchart Step 2A (Part 1 Mayo 

Test)—Determine whether the claim is 

directed to a law of nature, a natural 

phenomenon, or an abstract idea 

(judicial exceptions). 

After determining what applicant has 

invented by reviewing the entire 

application disclosure and construing 

the claims in accordance with their 

broadest reasonable interpretation 

(MPEP 2103), determine whether the 

claim as a whole is directed to a judicial 

exception. A claim to a process, 

machine, manufacture or composition of 

matter (Step 1: YES) that is not directed 

to any judicial exceptions (Step 2A: NO) 

is eligible and needs no further 

eligibility analysis. A claim that is 

directed to at least one exception (Step 

2A: YES) requires further analysis to 

determine whether the claim recites a 

patent-eligible application of the 

exception (Step 2B). 

1. Determine What the Claim Is 

‘‘Directed to’’ 

A claim is directed to a judicial 

exception when a law of nature, a 

natural phenomenon, or an abstract idea 

is recited (i.e., set forth or described) in 

the claim. Such a claim requires closer 

scrutiny for eligibility because of the 

risk that it will ‘‘tie up’’ 8 the excepted 

subject matter and pre-empt others from 

using the law of nature, natural 

phenomenon, or abstract idea. Courts 

tread carefully in scrutinizing such 

claims because at some level all 

inventions embody, use, reflect, rest 

upon, or apply a law of nature, natural 

phenomenon, or abstract idea.9 To 

properly interpret the claim, it is 

important to understand what the 

applicant has invented and is seeking to 

patent. 

For claims that may recite a judicial 

exception, but are directed to inventions 

that clearly do not seek to tie up the 

judicial exception, see Section I.B.3. 

regarding a streamlined eligibility 

analysis. 

2. Identify the Judicial Exception 

Recited in the Claim 

MPEP 2106(II) provides a detailed 

explanation of the judicial exceptions 

and their legal bases. It should be noted 

that there are no bright lines between 

the types of exceptions because many of 

these concepts can fall under several 

exceptions. For example, mathematical 

formulas are considered to be an 

exception as they express a scientific 

truth, but have been labelled by the 

courts as both abstract ideas and laws of 

nature. Likewise, ‘‘products of nature’’ 

are considered to be an exception 

because they tie up the use of naturally 

occurring things, but have been labelled 

as both laws of nature and natural 

phenomena. Thus, it is sufficient for 

this analysis to identify that the claimed 

concept aligns with at least one judicial 

exception. 

Laws of nature and natural 

phenomena, as identified by the courts, 

include naturally occurring principles/

substances and substances that do not 

have markedly different characteristics 

compared to what occurs in nature. See 

Section I.A.3. for a discussion of the 

markedly different characteristics 

analysis used to determine whether a 

claim that includes a nature-based 

product limitation recites an exception. 

The types of concepts courts have found 

to be laws of nature and natural 

phenomena are shown by these cases, 

which are intended to be illustrative 

and not limiting: 

• An isolated DNA (Myriad: see 

Section III, Example 2); 

• a correlation that is the 

consequence of how a certain 

compound is metabolized by the body 

(Mayo: see Section III, Example 5); 

• electromagnetism to transmit 

signals (Morse: 10 see Section IV.A.1.); 

and 

• the chemical principle underlying 

the union between fatty elements and 

water (Tilghman: 11 see Section IV.A.2.). 

Abstract ideas have been identified by 

the courts by way of example, including 

fundamental economic practices, certain 

methods of organizing human activities, 

an idea ‘of itself,’ and mathematical 

relationships/formulas.12 The types of 

concepts courts have found to be 

abstract ideas are shown by these cases, 

which are intended to be illustrative 

and not limiting: 

• Mitigating settlement risk (Alice: 

see Section III, Example 6); 

• hedging (Bilski: 13 see Section 

IV.A.5.); 

• creating a contractual relationship 

(buySAFE: 14 see Section IV.C.3.); 

• using advertising as an exchange or 

currency (Ultramercial: 15 see Section 

IV.C.4.); 

• processing information through a 

clearinghouse (Dealertrack: 16 see 

Section IV.B.3.); 

• comparing new and stored 

information and using rules to identify 

options (SmartGene: 17 see Section 

IV.B.4.); 

• using categories to organize, store 

and transmit information (Cyberfone: 18

see Section IV.B.5.); 

• organizing information through 

mathematical correlations (Digitech: 19

see Section IV.C.1.); 

• managing a game of bingo (Planet 

Bingo: 20 see Section IV.C.2.); 

• the Arrhenius equation for 

calculating the cure time of rubber 

(Diehr: 21 see Section III, Example 3); 

• a formula for updating alarm limits 

(Flook: 22 see Section III, Example 4); 

• a mathematical formula relating to 

standing wave phenomena (Mackay 

Radio: 23 see Section IV.A.3.); and 

• a mathematical procedure for 

converting one form of numerical 

representation to another (Benson: 24 see 

Section IV.A.4.) 

3. Nature-Based Products 

a. Determine Whether the Markedly 

Different Characteristics Analysis Is 

Needed To Evaluate a Nature-Based 

Product Limitation Recited in a Claim 

Nature-based products, as used 

herein, include both eligible and 


tkelley on DSK3SPTVN1PROD with RULES
Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations 74623 

25 Myriad, 133 S. Ct. at 2111. 

26Alice Corp., 134 S. Ct. at 2360. 27This revised analysis represents a change from 

prior guidance, because now changes in functional 

characteristics and other non-structural properties 

can evidence markedly different characteristics, 

whereas in the March 2014 Procedure only 

structural changes were sufficient to show a marked 

difference. 28To show a marked difference, a characteristic 

must be changed as compared to nature, and cannot 

be an inherent or innate characteristic of the 

naturally occurring counterpart. Funk Bros. Seed 

Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948) 

(‘‘[The inventor did] not create a state of inhibition 

or of non-inhibition in the bacteria. Their qualities 

are the work of nature. Those qualities are of course 

not patentable.’’); In re Marden, 47 F.2d 958 (CCPA 

1931) (eligibility of a claim to ductile vanadium 

held ineligible, because the ‘‘ductility or 

malleability of vanadium is . . . one of its inherent 

characteristics and not a characteristic given to it 

by virtue of a new combination with other materials 

or which characteristic is brought about by some 

chemical reaction or agency which changes its 

inherent characteristics’’). Further, a difference in a 

characteristic that came about or was produced 

independently of any effort or influence by 

applicant cannot show a marked difference. Roslin, 

750 F.3d at 1338 (Because ‘‘any phenotypic 

differences came about or were produced ‘quite 

independently of any effort of the patentee’ ’’ and 

were ‘‘uninfluenced by Roslin’s efforts’’, they ‘‘do 

not confer eligibility on their claimed subject 

matter’’ (quoting Funk Bros.)). 

29See, e.g., Funk Bros., 333 U.S. at 130–31 

(properties and functions of bacteria such as a state 

of inhibition or non-inhibition and the ability to 

infect leguminous plants); Diamond v. Chakrabarty, 

447 U.S. 303, 310 (1980) (genetically modified 

bacterium’s ability to degrade hydrocarbons); In re 

King, 107 F.2d 618 (CCPA 1939) (the ability of 

vitamin C to prevent and treat scurvy); Myriad, 133 

S. Ct. at 2111, 2116–17 (the protein-encoding 

information of a nucleic acid). 

30See, e.g., Parke-Davis & Co. v. H.K. Mulford Co., 

189 F. 95, 103–04 (S.D.N.Y. 1911) (the alkalinity of 

a chemical compound); Marden, 47 F.2d at 958 (the 

ductility or malleability of metals); Funk Bros., 333 

U.S. at 130 (‘‘The qualities of these bacteria, like the 

heat of the sun, electricity, or the qualities of 

metals, are part of the store-house of knowledge of 

all men. They are manifestations of laws of nature, 

free to all men and reserved exclusively to none.’’). 

31See, e.g., Roslin, 750 F.3d at 1338 (phenotype, 

including functional and structural characteristics, 

e.g., the shape, size, color, and behavior of an 

organism). 

32See, e.g., Chakrabarty, 447 U.S. at 305 and n.1 

(the physical presence of plasmids in a bacterial 

cell); Parke-Davis, 189 F. at 100, 103 (claimed 

chemical was a ‘‘nonsalt’’ and a ‘‘crystalline 

substance’’); Myriad, 133 S. Ct. at 2116, 2119 

(nucleotide sequence of DNA); Roslin, 750 F.3d at 

1338–39 (the genetic makeup (genotype) of a cell or 

organism). 

ineligible products and merely refer to 

the types of products subject to the 

markedly different characteristics 

analysis used to identify ‘‘product of 

nature’’ exceptions. Courts have held 

that naturally occurring products and 

some man-made products that are 

essentially no different from a naturally 

occurring product are ‘‘products of 

nature’’ 25 that fall under the laws of 

nature or natural phenomena exception. 

To determine whether a claim that 

includes a nature-based product 

limitation recites a ‘‘product of nature’’ 

exception, use the markedly different 

characteristics analysis to evaluate the 

nature-based product limitation 

(discussed in section I.A.3.b). A claim 

that recites a nature-based product 

limitation that does not exhibit 

markedly different characteristics from 

its naturally occurring counterpart in its 

natural state is directed to a ‘‘product of 

nature’’ exception (Step 2A: YES). 

Care should be taken not to overly 

extend the markedly different 

characteristics analysis to products that 

when viewed as a whole are not naturebased. For claims that recite a naturebased product limitation (which may or 

may not be a ‘‘product of nature’’ 

exception) but are directed to inventions 

that clearly do not seek to tie up any 

judicial exception, see Section I.B.3. 

regarding a streamlined eligibility 

analysis. In such cases, it would not be 

necessary to conduct a markedly 

different characteristics analysis. 

A nature-based product can be 

claimed by itself (e.g., ‘‘a Lactobacillus 

bacterium’’) or as one or more 

limitations of a claim (e.g., ‘‘a probiotic 

composition comprising a mixture of 

Lactobacillus and milk in a container’’). 

The markedly different characteristics 

analysis should be applied only to the 

nature-based product limitations in the 

claim to determine whether the naturebased products are ‘‘product of nature’’ 

exceptions. When the nature-based 

product is produced by combining 

multiple components, the markedly 

different characteristics analysis should 

be applied to the resultant nature-based 

combination, rather than its component 

parts. In the example above, the mixture 

of Lactobacillus and milk should be 

analyzed for markedly different 

characteristics, rather than the 

Lactobacillus separately and the milk 

separately. The container would not be 

subject to the markedly different 

characteristics analysis as it is not a 

nature-based product, but would be 

evaluated in Step 2B if it is determined 

that the mixture of Lactobacillus and 

milk does not have markedly different 

characteristics from any naturally 

occurring counterpart and thus is a 

‘‘product of nature’’ exception. 

For a product-by-process claim, the 

analysis turns on whether the naturebased product in the claim has 

markedly different characteristics from 

its naturally occurring counterpart. (See 

MPEP 2113 for product-by-process 

claims.) 

A process claim is not subject to the 

markedly different analysis for naturebased products used in the process, 

except in the limited situation where a 

process claim is drafted in such a way 26

that there is no difference in substance 

from a product claim (e.g., ‘‘a method of 

providing an apple.’’). 

b. Markedly Different Characteristics 

Analysis: Structure, Function and/or 

Other Properties 27

The markedly different characteristics 

analysis compares the nature-based 

product limitation to its naturally 

occurring counterpart in its natural 

state. When there is no naturally 

occurring counterpart to the naturebased product, the comparison should 

be made to the closest naturally 

occurring counterpart. In the case of a 

nature-based combination, the closest 

counterpart may be the individual 

nature-based components that form the 

combination, i.e., the characteristics of 

the claimed nature-based combination 

are compared to the characteristics of 

the components in their natural state. 

Markedly different characteristics can 

be expressed as the product’s structure, 

function, and/or other properties,28 and 

will be evaluated based on what is 

recited in the claim on a case-by-case 

basis. As seen by the examples that are 

being released in conjunction with this 

Interim Eligibility Guidance, even a 

small change can result in markedly 

different characteristics from the 

product’s naturally occurring 

counterpart. In accordance with this 

analysis, a product that is purified or 

isolated, for example, will be eligible 

when there is a resultant change in 

characteristics sufficient to show a 

marked difference from the product’s 

naturally occurring counterpart. If the 

claim recites a nature-based product 

limitation that does not exhibit 

markedly different characteristics, the 

claim is directed to a ‘‘product of 

nature’’ exception (a law of nature or 

naturally occurring phenomenon), and 

the claim will require further analysis to 

determine eligibility based on whether 

additional elements add significantly 

more to the exception. 

Non-limiting examples of the types of 

characteristics considered by the courts 

when determining whether there is a 

marked difference include: 

• Biological or pharmacological 

functions or activities; 29

• Chemical and physical 

properties; 30

• Phenotype, including functional 

and structural characteristics; 31 and 

• Structure and form, whether 

chemical, genetic or physical.32

If the claim includes a nature-based 

product that has markedly different 

characteristics, the claim does not recite 

a ‘‘product of nature’’ exception and is 

eligible (Step 2A: NO) unless the claim 


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33Alice Corp., 134 S. Ct. at 2357. 

34Alice Corp., 134 S. Ct. at 2359 (citing Diehr, 450 

U.S. at 177–78) (a mathematical formula applied in 

a specific rubber molding process). 

35 Id., at 2359. 

36Bilski, 130 S. Ct. at 3227 (‘‘The Court’s 

precedents establish that the machine-ortransformation test is a useful and important clue, 

an investigative tool, for determining whether some 

claimed inventions are processes under § 101.’’). 

37 Diehr, 450 U.S. at 184 (‘‘That respondents’ 

claims [to a specific rubber molding process] 

involve the transformation of an article, in this case 

raw, uncured synthetic rubber, into a different state 

or thing cannot be disputed.’’). See also Benson, 409 

U.S. at 70 (‘‘Transformation and reduction of an 

article ‘to a different state or thing’ is the clue to 

the patentability of a process claim that does not 

include particular machines. So it is that a patent 

in the process of ‘manufacturing fat acids and 

glycerine from fatty bodies by the action of water 

at a high temperature and pressure’ was sustained 

in Tilghman, 102 U.S. at 721’’). 

38 Mayo, 132 S. Ct. at 1299, 1302 (claim ineligible 

because the recited ‘‘instructions add nothing 

specific to the laws of nature other than what is 

well-understood, routine, conventional activity, 

previously engaged in by those in the field,’’ which 

was ‘‘[u]nlike, say, a typical patent on a new drug 

or a new way of using an existing drug’’). 

39Alice Corp., 134 S. Ct. at 2360 (noting that none 

of the hardware recited ‘‘offers a meaningful 

limitation beyond generally linking ‘the use of the 

[method] to a particular technological 

environment,’ that is, implementation via 

computers’’ (citing Bilski, 561 U.S. at 610, 611)). 

40 Id. at 2358 (simply implementing a 

mathematical principle on a physical machine, 

namely a computer (citing Mayo, 132 S. Ct. at 

1301)). 

41 Id. at 2359 (using a computer to obtain data, 

adjust account balances, and issue automated 

instructions); Mayo, 132 S. Ct. at 1300 (telling a 

doctor to measure metabolite levels in the blood 

using any known process). 

42 Mayo, 132 S. Ct. at 1297–98 (measuring 

metabolites of a drug administered to a patient); 

Flook, 437 U.S. at 589–90 (1978) (adjusting an alarm 

limit variable to a figure computed according to a 

mathematical formula). 

43 Mayo, 132 S. Ct. at 1300–01 (citing Bilski, 130 

S. Ct. 3223–24) (limiting hedging to use in 

commodities and energy markets); Flook, 437 U.S. 

at 589–90. 

recites another exception (such as a law 

of nature or abstract idea, or a different 

natural phenomenon). If the claim 

includes a product having no markedly 

different characteristics from the 

product’s naturally occurring 

counterpart in its natural state, the 

claim is directed to an exception (Step 

2A: YES), and the eligibility analysis 

must proceed to Step 2B to determine if 

any additional elements in the claim 

add significantly more to the exception. 

For claims that are to a single naturebased product, once a markedly 

different characteristic in that product is 

shown, no further analysis would be 

necessary for eligibility because no 

‘‘product of nature’’ exception is recited 

(i.e., Step 2B is not necessary because 

the answer to Step 2A is NO). This is 

a change from prior guidance because 

the inquiry as to whether the claim 

amounts to significantly more than a 

‘‘product of nature’’ exception is not 

relevant to claims that do not recite an 

exception. Thus, a claim can be found 

eligible based solely on a showing that 

the nature-based product in the claim 

has markedly different characteristics 

and thus is not a ‘‘product of nature’’ 

exception, when no other exception is 

recited in the claim. 

If a rejection under 35 U.S.C. 101 is 

ultimately made, the rejection should 

identify the exception as it is recited 

(i.e., set forth or described) in the claim, 

and explain why it is an exception 

providing reasons why the product does 

not have markedly different 

characteristics from its naturally 

occurring counterpart in its natural 

state. 

B. Flowchart Step 2B (Part 2 Mayo 

test)—Determine whether any element, 

or combination of elements, in the claim 

is sufficient to ensure that the claim 

amounts to significantly more than the 

judicial exception. 

A claim directed to a judicial 

exception must be analyzed to 

determine whether the elements of the 

claim, considered both individually and 

as an ordered combination, are 

sufficient to ensure that the claim as a 

whole amounts to significantly more 

than the exception itself—this has been 

termed a search for an ‘‘inventive 

concept.’’ 33 To be patent-eligible, a 

claim that is directed to a judicial 

exception must include additional 

features to ensure that the claim 

describes a process or product that 

applies the exception in a meaningful 

way, such that it is more than a drafting 

effort designed to monopolize the 

exception. It is important to consider 

the claim as whole. Individual elements 

viewed on their own may not appear to 

add significantly more to the claim, but 

when combined may amount to 

significantly more than the exception. 

Every claim must be examined 

individually, based on the particular 

elements recited therein, and should not 

be judged to automatically stand or fall 

with similar claims in an application. 

1. ‘‘Significantly More’’ 

The Supreme Court has identified a 

number of considerations for 

determining whether a claim with 

additional elements amounts to 

significantly more than the judicial 

exception itself. The following are 

examples of these considerations, which 

are not intended to be exclusive or 

limiting. Limitations that may be 

enough to qualify as ‘‘significantly 

more’’ when recited in a claim with a 

judicial exception include: 

• Improvements to another 

technology or technical field; 34

• Improvements to the functioning of 

the computer itself; 35

• Applying the judicial exception 

with, or by use of, a particular 

machine; 36

• Effecting a transformation or 

reduction of a particular article to a 

different state or thing; 37

• Adding a specific limitation other 

than what is well-understood, routine 

and conventional in the field, or adding 

unconventional steps that confine the 

claim to a particular useful 

application; 38 or 

• Other meaningful limitations 

beyond generally linking the use of the 

judicial exception to a particular 

technological environment.39

Limitations that were found not to be 

enough to qualify as ‘‘significantly 

more’’ when recited in a claim with a 

judicial exception include: 

• Adding the words ‘‘apply it’’ (or an 

equivalent) with the judicial exception, 

or mere instructions to implement an 

abstract idea on a computer; 40

• Simply appending well-understood, 

routine and conventional activities 

previously known to the industry, 

specified at a high level of generality, to 

the judicial exception, e.g., a claim to an 

abstract idea requiring no more than a 

generic computer to perform generic 

computer functions that are wellunderstood, routine and conventional 

activities previously known to the 

industry; 41

• Adding insignificant extrasolution 

activity to the judicial exception, e.g., 

mere data gathering in conjunction with 

a law of nature or abstract idea; 42 or 

• Generally linking the use of the 

judicial exception to a particular 

technological environment or field of 

use.43

Section III provides examples of 

claims analyzed under this framework. 

If the claim as a whole does recite 

significantly more than the exception 

itself, the claim is eligible (Step 2B: 

YES), and the eligibility analysis is 

complete. If there are no meaningful 

limitations in the claim that transform 

the exception into a patent-eligible 

application, such that the claim does 

not amount to significantly more than 

the exception itself, the claim is not 

patent-eligible (Step 2B: NO) and should 

be rejected under 35 U.S.C. 101. In the 

rejection, identify the exception by 

referring to where it is recited (i.e., set 

forth or described) in the claim and 

explain why it is considered an 

exception. Then, if the claim includes 

additional elements, identify the 

elements in the rejection and explain 

why they do not add significantly more 

to the exception. Also see MPEP 


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44Chakrabarty, 447 U.S. at 303. 

2103(VI) and 2106(III) for instructions 

on making the rejection. 

2. A Claim Reciting a Plurality of 

Exceptions 

For a claim that is directed to a 

plurality of exceptions, conduct the 

eligibility analysis for one of the 

exceptions. If the claim recites an 

element or combination of elements that 

amount to significantly more than that 

exception, consider whether those 

additional elements also amount to 

significantly more for the other claimed 

exception(s), which ensures that the 

claim does not have a pre-emptive effect 

with respect to any of the recited 

exceptions. Additional elements that 

satisfy Step 2B for one exception will 

likely satisfy Step 2B for all exceptions 

in a claim. On the other hand, if the 

claim fails under Step 2B for one 

exception, the claim is ineligible, and 

no further eligibility analysis is needed. 

3. Streamlined Eligibility Analysis 

For purposes of efficiency in 

examination, a streamlined eligibility 

analysis can be used for a claim that 

may or may not recite a judicial 

exception but, when viewed as a whole, 

clearly does not seek to tie up any 

judicial exception such that others 

cannot practice it. Such claims do not 

need to proceed through the full 

analysis herein as their eligibility will 

be self-evident. However, if there is 

doubt as to whether the applicant is 

effectively seeking coverage for a 

judicial exception itself, the full 

analysis should be conducted to 

determine whether the claim recites 

significantly more than the judicial 

exception. 

For instance, a claim directed to a 

complex manufactured industrial 

product or process that recites 

meaningful limitations along with a 

judicial exception may sufficiently limit 

its practical application so that a full 

eligibility analysis is not needed. As an 

example, a robotic arm assembly having 

a control system that operates using 

certain mathematical relationships is 

clearly not an attempt to tie up use of 

the mathematical relationships and 

would not require a full analysis to 

determine eligibility. Also, a claim that 

recites a nature-based product, but 

clearly does not attempt to tie up the 

nature-based product, does not require a 

markedly different characteristics 

analysis to identify a ‘‘product of 

nature’’ exception. As an example, a 

claim directed to an artificial hip 

prosthesis coated with a naturally 

occurring mineral is not an attempt to 

tie up the mineral. Similarly, claimed 

products that merely include ancillary 

nature-based components, such as a 

claim that is directed to a cellphone 

with an electrical contact made of gold 

or a plastic chair with wood trim, would 

not require analysis of the nature-based 

component to identify a ‘‘product of 

nature’’ exception because such claims 

do not attempt to improperly tie up the 

nature-based product. 

II. Complete Examination 

Regardless of whether a rejection 

under 35 U.S.C. 101 is made, a complete 

examination should be made for every 

claim under each of the other 

patentability requirements: 35 U.S.C. 

102, 103, 112, and 101 (utility, 

inventorship and double patenting) and 

non-statutory double patenting. See 

MPEP 2103 et seq. and 2106(III). 

III. Sample Analyses 

The following examples, based upon 

Supreme Court decisions, use the 

Interim Eligibility Guidance and 

flowchart to analyze claims for subject 

matter eligibility. 

Example 1. Diamond v. Chakrabarty 44

(U.S. Patent No. 4,259,444) 

Background: Stable energy-generating 

plasmids that provide hydrocarbon 

degradative pathways exist within 

certain bacteria in nature. Different 

plasmids provide the ability to degrade 

different hydrocarbons, e.g., one 

plasmid provides the ability to degrade 

camphor, and a different plasmid 

provides the ability to degrade octane. 

Pseudomonas bacteria are naturally 

occurring bacteria. Naturally occurring 

Pseudomonas bacteria containing one 

stable energy-generating plasmid and 

capable of degrading a single type of 

hydrocarbon are known. 

Representative Claim: 

A bacterium from the genus Pseudomonas 

containing therein at least two stable energygenerating plasmids, each of said plasmids 

providing a separate hydrocarbon 

degradative pathway. 

Analysis: The claim is directed to a 

statutory category, e.g., a manufacture or 

composition of matter (Step 1: YES) and 

recites a nature-based product (a 

bacterium). To determine whether the 

claim is directed to a ‘‘product of 

nature’’ exception, the nature-based 

product is analyzed using the markedly 

different characteristics analysis. 

The claimed bacterium has a different 

functional characteristic from naturally 

occurring Pseudomonas bacteria, i.e., it 

is able to degrade at least two different 

hydrocarbons as compared to naturally 

occurring Pseudomonas bacteria that 

can only degrade a single hydrocarbon. 

The claimed bacterium also has a 

different structural characteristic, i.e., it 

was genetically modified to include 

more plasmids than are found in a 

single naturally occurring Pseudomonas 

bacterium. The bacterium is new with 

markedly different characteristics from 

any found in nature, due to the 

additional plasmids and resultant 

capacity for degrading multiple 

hydrocarbon components of oil. These 

different functional and structural 

characteristics rise to the level of a 

marked difference, and accordingly the 

claimed bacterium is not a ‘‘product of 

nature’’ exception. Thus, the claim is 

not directed to an exception (Step 2A: 

NO). The claim is eligible. 

Example 2. Association for Molecular 

Pathology v. Myriad Genetics, Inc. (U.S. 

Patent No. 5,747,282) 

Background: A human gene is a 

naturally occurring segment of DNA that 

codes for a protein. In nature, human 

genes are linked together by covalent 

bonds to form long chains of DNA 

called chromosomes. The inventors 

discovered the location and nucleotide 

sequence of a naturally occurring 

human gene called BRCA1. The BRCA1 

gene encodes a polypeptide called 

BRCA1, which helps repair damaged 

DNA and prevent tumor formation. 

There are many naturally-occurring 

mutations in the BRCA1 gene. Some 

mutations are harmless, but others can 

dramatically increase a person’s risk of 

developing breast and ovarian cancer. 

Knowledge of the location and 

nucleotide sequence of the BRCA1 gene 

allows it to be isolated so that it can be 

studied, manipulated, or used. Isolated 

genes can be made in two different 

ways. The first way is to physically 

remove the gene from its natural 

location on the human chromosome by 

breaking two covalent bonds—one on 

each end of the gene—that connect the 

gene with the rest of the chromosome in 

nature. The second way is to synthesize 

the gene in a laboratory, e.g., by linking 

together nucleotides to form the 

naturally occurring sequence of the 

gene. Both ways result in a gene that is 

‘‘isolated’’ from its natural environment, 

i.e., removed from the chromosome in 

which it occurs in nature. 

The BRCA1 gene is about 80,000 

nucleotides long, including several 

introns and several exons. In nature, the 

BRCA1 polypeptide is produced from 

the BRCA1 gene through an 

intermediate product called an mRNA. 

The natural creation of the BRCA1 

mRNA in human cells involves splicing 

(removal) of the introns, and results in 

an exons-only molecule. The inventors 

used the mRNA to create an exons-only 


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molecule called a complementary DNA 

(cDNA), which contains the same 

protein-encoding information as the 

BRCA1 gene, but omits the non-coding 

portions (introns) of the gene. The 

nucleotide sequence of this cDNA was 

disclosed as SEQ ID NO:1, and the 

amino acid sequence of the BRCA1 

polypeptide as SEQ ID NO:2. 

Representative Claims: 

Claim 1. An isolated DNA coding for a 

BRCA1 polypeptide, said polypeptide having 

the amino acid sequence set forth in SEQ ID 

NO:2. 

Claim 2. The isolated DNA of claim 1, 

wherein said DNA has the nucleotide 

sequence set forth in SEQ ID NO:1. 

Analysis: The claims are directed to a 

statutory category, e.g., a composition of 

matter (Step 1: YES), and recite naturebased products (a DNA). Thus, the 

markedly different analysis is used to 

determine if that nature-based product 

is a ‘‘product of nature’’ exception. 

Claim 1: The claim encompasses 

isolated DNA that has the same 

nucleotide sequence as the naturally 

occurring BRCA1 gene. The isolation of 

the claimed DNA results in a different 

structural characteristic than the natural 

gene, because the natural gene has 

covalent bonds on the ends that connect 

the gene to the chromosome which the 

claimed DNA lacks. However, the 

claimed DNA is otherwise structurally 

identical to the natural gene, e.g., it has 

the same genetic structure and 

nucleotide sequence as the BRCA1 gene 

in nature. The claimed DNA has no 

different functional characteristics, i.e., 

it encodes the same protein as the 

natural gene. Under the holding of 

Myriad, this isolated but otherwise 

unchanged DNA is not eligible because 

it is not different enough from what 

exists in nature to avoid improperly 

tying up the future use and study of the 

naturally occurring BRCA1 gene. In 

other words, the claimed DNA is 

different, but not markedly different, 

from its naturally occurring counterpart 

(BRCA 1 gene), and thus is directed to 

a ‘‘product of nature’’ exception (Step 

2A: YES). 

A claim directed to an exception 

should be analyzed to determine 

whether any element, or combination of 

elements, in the claim is sufficient to 

ensure that the claim amounts to 

significantly more than the exception. 

Claim 1 does not include any additional 

features that could add significantly 

more to the exception (Step 2B: NO). 

The claim is not eligible and should be 

rejected under 35 U.S.C. 101. 

Claim 2: The claim is limited to a 

DNA having the nucleotide sequence of 

SEQ ID NO: 1. As disclosed in the 

specification, SEQ ID NO: 1 is an exonsonly sequence of a cDNA created by the 

inventors. The claimed DNA therefore 

has different structural characteristics 

than the naturally occurring BRCA1 

gene, e.g., in addition to lacking 

covalent bonds on its ends, it has a 

different nucleotide sequence (SEQ ID 

NO: 1 includes only exons, as compared 

to the natural sequence containing both 

exons and introns). The claimed DNA 

has no different functional 

characteristics, i.e., it encodes the same 

protein as the natural gene. Here, the 

differences in structural characteristics 

between the claimed DNA and the 

natural gene are significant, e.g., they 

are enough to ensure that the claim is 

not improperly tying up the future use 

of the BRCA1 gene. Thus, they rise to 

the level of a marked difference, and the 

claimed DNA is not a ‘‘product of 

nature’’ exception. Thus, the claim is 

not directed to an exception (Step 2A: 

NO). The claim is eligible. 

Example 3. Diamond v. Diehr (U.S. 

Patent No. 4,344,142) 

Background: The claimed invention is 

a process for molding raw, uncured 

synthetic rubber into cured precision 

products. The process uses a mold for 

precisely shaping the uncured material 

under heat and pressure and then curing 

the synthetic rubber in the mold so that 

the product will retain its shape and be 

functionally operative after the molding 

is completed. Achieving the perfect cure 

depends upon several factors including 

the thickness of the article to be molded, 

the temperature of the molding process, 

and the amount of time that the article 

is allowed to remain in the press. It is 

possible to calculate when to open the 

press and remove the cured product 

using well-known time, temperature, 

and cure relationships by means of the 

Arrhenius equation. The inventors 

characterize their invention as the 

process of constantly measuring the 

actual temperature inside the mold, and 

automatically feeding these temperature 

measurements into a computer that 

repeatedly recalculates the cure time by 

use of the Arrhenius equation. When the 

recalculated time equals the actual time 

that has elapsed since the press was 

closed, the computer signals a device to 

open the press. 

Representative Claim: 

Claim 1. A method of operating a rubbermolding press for precision molded 

compounds with the aid of a digital 

computer, comprising: 

providing said computer with a data base 

for said press including at least, natural 

logarithm conversion data (ln), the activation 

energy constant (C) unique to each batch of 

said compound being molded, and a constant 

(x) dependent upon the geometry of the 

particular mold of the press, 

initiating an interval timer in said 

computer upon the closure of the press for 

monitoring the elapsed time of said closure, 

constantly determining the temperature (Z) 

of the mold at a location closely adjacent to 

the mold cavity in the press during molding, 

constantly providing the computer with 

the temperature (Z), 

repetitively calculating in the computer, at 

frequent intervals during each cure, the 

Arrhenius equation for reaction time during 

the cure, which is ln v = CZ+x, where v is 

the total required cure time, repetitively 

comparing in the computer at said frequent 

intervals during the cure each said 

calculation of the total required cure time 

calculated with the Arrhenius equation and 

said elapsed time, and 

opening the press automatically when a 

said comparison indicates equivalence. 

Analysis: The claim is directed to a 

statutory category, i.e., a process (Step 1: 

YES). The claim recites the Arrhenius 

equation, which is the mathematical 

formula: ln v = CZ+x. The court noted 

that an algorithm, or mathematical 

formula, is like a law of nature, which 

cannot be the subject of a patent. The 

claimed process when viewed as a 

whole focuses on the use of the 

Arrhenius equation to cure synthetic 

rubber. Thus, the claim is directed to an 

exception (Step 2A: YES). 

Next, the claim as a whole is analyzed 

to determine whether any element, or 

combination of elements, is sufficient to 

ensure that the claim amounts to 

significantly more than the exception. 

The specifically disclosed and claimed 

constant measurement of temperature at 

a mold cavity of a rubber-molding press 

and the claimed repetitive computer 

recalculation of the appropriate cure 

time using the constantly updated 

measurements are additional elements 

that provide ‘‘something more’’ than 

mere computer implementation of 

calculation of the Arrhenius equation. 

Further, the claimed steps act in concert 

to transform raw, uncured rubber to 

cured molded rubber. The combination 

of steps recited in addition to the 

mathematical formula show that the 

claim is not to the formula in isolation, 

but rather that the steps impose 

meaningful limits that apply the 

formula to improve an existing 

technological process. Thus, the claim 

amounts to significantly more than the 

judicial exception (Step 2B: YES). The 

claim is eligible. 

Note: The Supreme Court has also 

characterized mathematical formulas as 

abstract ideas. As noted, all claims that are 

directed to a judicial exception, regardless of 

what the exception is called, are subject to 

the same analysis. 


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Example 4. Parker v. Flook 

Background: The invention is a 

method of updating alarm limits using 

a mathematical formula. An ‘‘alarm 

limit’’ is a number. During catalytic 

conversion processes, operating 

conditions such as temperature, 

pressure, and flow rates are constantly 

monitored. When any of these ‘‘process 

variables’’ exceeds a predetermined 

alarm limit, an alarm may signal the 

presence of an abnormal condition 

indicating either inefficiency or perhaps 

danger. The formula for updating alarm 

limits is used in a catalytic conversion 

processing system; however, there is no 

disclosure relating to that system, such 

as the chemical processes at work, the 

monitoring of process conditions, the 

determination of variables in the 

formula from process conditions, or the 

means of setting off an alarm or 

adjusting an alarm system. 

Representative Claim: 

Claim 1. A method for updating the value 

of at least one alarm limit on at least one 

process variable involved in a process 

comprising the catalytic chemical conversion 

of hydrocarbons wherein said alarm limit has 

a current value of Bo+K wherein Bo is the 

current alarm base and K is a predetermined 

alarm offset which comprises: 

(1) Determining the present value of said 

process variable, said present value being 

defined as PVL; 

(2) Determining a new alarm base B1, using 

the following equation: B1=Bo(1.0–F) + 

PVL(F) where F is a predetermined number 

greater than zero and less than 1.0; 

(3) Determining an updated alarm limit 

which is defined as B1+GK; and thereafter; 

(4) Adjusting said alarm limit to said 

updated alarm limit value. 

Analysis: The claim is directed to a 

statutory category, i.e., a process (Step 1: 

YES). The claim recites the 

mathematical formula ‘‘B1=Bo(1.0–F) + 

PVL(F)’’. The claimed invention focuses 

on the calculation of the number 

representing the alarm limit value using 

the mathematical formula. Thus, the 

claim is directed to a mathematical 

formula, which is like a law of nature 

that falls within the exceptions to 

patent-eligible subject matter (Step 2A: 

YES). 

A process is not unpatentable simply 

because it contains a law of nature or 

mathematical algorithm. The claim as a 

whole must be analyzed to determine 

what additional elements are recited in 

the claim. The claimed formula is 

limited by the steps of gathering the 

input variables and carrying out the 

calculation to update the number 

describing the alarm limit, and by the 

field of technology for which it is to be 

used. The determination of chemical 

process variables, and the use of a 

generic computer to calculate values, is 

routine and conventional in the field of 

chemical processing. Adjusting the 

alarm limit based on the solution to the 

mathematical formula is merely postsolution activity that could be attached 

to almost any formula. Limiting the 

claim to petrochemical and oil-refining 

industries, such that the claim does not 

seek to wholly preempt the 

mathematical formula, is a field-of-use 

limitation that does not impose 

meaningful limits on the mathematical 

formula. Moreover, when considered as 

an ordered combination, the claim is 

nothing more than a purely 

conventional computerized 

implementation of applicant’s formula. 

Therefore, the claim as a whole does not 

provide significantly more than a 

generic computer upon which the 

claimed formula is calculated. Thus, the 

claim does not amount to significantly 

more than the judicial exception itself 

(Step 2B: NO). The claim is not eligible 

and should be rejected under 35 U.S.C. 

101. 

Example 5. Mayo v. Prometheus (U.S. 

Patent No. 6,355,623) 

Background: The invention is a 

method of assisting doctors who use 

thiopurine drugs to treat patients with 

autoimmune diseases. The method 

helps doctors determine whether a 

given dosage level is too low or too 

high, based on the relationship between 

the concentration in the blood of a 

thiopurine metabolite (6-thioguanine) 

and the likelihood that the drug dosage 

will be ineffective or induce harmful 

side-effects. The relationship is a 

natural consequence of the ways in 

which thiopurine compounds are 

metabolized by the body, even though 

human action is needed to trigger a 

manifestation of the relationship. 

Representative Claim: 

Claim 1. A method of optimizing 

therapeutic efficacy for treatment of an 

immune-mediated gastrointestinal disorder, 

comprising: 

(a) administering a drug providing 6- 

thioguanine to a subject having said immunemediated gastrointestinal disorder; and 

(b) determining the level of 6-thioguanine 

in said subject having said immune-mediated 

gastrointestinal disorder, 

wherein the level of 6-thioguanine less 

than about 230 pmol per 8x108 red blood 

cells indicates a need to increase the amount 

of said drug subsequently administered to 

said subject and wherein the level of 6- 

thioguanine greater than about 400 pmol per 

8x108 red blood cells indicates a need to 

decrease the amount of said drug 

subsequently administered to said subject. 

Analysis: The claim is directed to a 

statutory category, i.e., a process (Step 1: 

YES). The claim sets forth relationships 

between concentrations of certain 

metabolites in the blood and the 

likelihood that a dosage of a thiopurine 

drug will prove ineffective or cause 

harm. While it takes a human action 

(the administration of a thiopurine drug) 

to trigger a manifestation of this relation 

in a particular person, the relation itself 

exists in principle apart from any 

human action. The claim recites that 

relation and, thus, is directed towards a 

natural law (Step 2A: YES). 

Next, the claim as a whole is analyzed 

to determine whether any element, or 

combination of elements, is sufficient to 

ensure that the claim amounts to 

significantly more than the exception. 

The ‘‘administering’’ step simply refers 

to the relevant audience, namely doctors 

who treat patients with certain diseases 

with thiopurine drugs. That audience is 

a pre-existing audience; doctors used 

thiopurine drugs to treat patients 

suffering from autoimmune disorders 

long before anyone asserted these 

claims. The ‘‘wherein’’ clauses simply 

tell a doctor about the relevant natural 

laws, at most adding a suggestion that 

the doctor should take those laws into 

account when treating the patient. The 

‘‘determining’’ step tells the doctor to 

determine the level of the relevant 

metabolites in the blood, through 

whatever process the doctor or the 

laboratory wishes to use. The claims 

inform a relevant audience about certain 

laws of nature; any additional steps 

consist of well understood, routine, 

conventional activity already engaged in 

by the scientific community; and those 

steps, when viewed as a whole, add 

nothing significant beyond the sum of 

their parts taken separately. Even 

though the laws of nature at issue are 

narrow laws that may have limited 

applications, the claim does not amount 

to significantly more than the natural 

law itself (Step 2B: NO). The claim is 

not eligible and should be rejected 

under 35 U.S.C. 101. 

Example 6. Alice Corp. v. CLS Bank 

(U.S. Patent Nos. 5,970,479 and 

7,725,375) 

Background: The claims at issue 

relate to a computerized scheme for 

mitigating ‘‘settlement risk’’; i.e., the 

risk that only one party to an agreedupon financial exchange will satisfy its 

obligation. In particular, the claims are 

designed to facilitate the exchange of 

financial obligations between two 

parties by using a computer system as 

a third-party intermediary. The 

intermediary creates ‘‘shadow’’ credit 

and debit records (i.e., account ledgers) 

that mirror the balances in the parties’ 

real-world accounts at ‘‘exchange 

institutions’’ (e.g., banks). The 


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45 In Alice Corp., the parties stipulated that the 

method was performed by a computer, despite the 

lack of a computer recitation in the representative 

method claim. 

intermediary updates the shadow 

records in real time as transactions are 

entered, allowing only those 

transactions for which the parties’ 

updated shadow records indicate 

sufficient resources to satisfy their 

mutual obligations. At the end of the 

day, the intermediary instructs the 

relevant financial institutions to carry 

out the ‘‘permitted’’ transactions in 

accordance with the updated shadow 

records, thus mitigating the risk that 

only one party will perform the agreedupon exchange. The invention is 

claimed in the form of a computerimplemented process, a system enabling 

that process, and a computer-readable 

medium enabling that process to be 

performed by a computer. 

Representative Method Claim (U.S. 

Patent No. 5,970,479) 

Claim 33. A method of exchanging 

obligations as between parties, each party 

holding a credit record and a debit record 

with an exchange institution, the credit 

records and debit records for exchange of 

predetermined obligations, the method 

comprising the steps of: 

(a) creating a shadow credit record and a 

shadow debit record for each stakeholder 

party to be held independently by a 

supervisory institution from the exchange 

institutions; 

(b) obtaining from each exchange 

institution a start-of-day balance for each 

shadow credit record and shadow debit 

record; 

(c) for every transaction resulting in an 

exchange obligation, the supervisory 

institution adjusting each respective party’s 

shadow credit record or shadow debit record, 

allowing only these transactions that do not 

result in the value of the shadow debit record 

being less than the value of the shadow credit 

record at any time, each said adjustment 

taking place in chronological order; and 

(d) at the end-of-day, the supervisory 

institution instructing one of the exchange 

institutions to exchange credits or debits to 

the credit record and debit record of the 

respective parties in accordance with the 

adjustments of the said permitted 

transactions, the credits and debits being 

irrevocable, time invariant obligations placed 

on the exchange institutions.45

Analysis: The claim is directed to a 

statutory category, i.e., a process (Step 1: 

YES). The claim recites the concept of 

managing settlement risk through an 

intermediary, i.e., intermediated 

settlement. The claimed invention 

describes the procedures an 

intermediary should take in managing 

settlement risk between two parties, i.e., 

specific details of intermediating 

settlement. Intermediated settlement, 

like risk hedging in Bilski, is not a 

preexisting fundamental truth but rather 

is a longstanding commercial practice (a 

method of organizing human activity). 

The concept of intermediated settlement 

is a fundamental economic practice long 

prevalent in our system of commerce, 

which is in the realm of abstract ideas 

identified by the Supreme Court. Thus, 

the claim is directed to the abstract idea 

of intermediated settlement (Step 2A: 

YES). 

Next, the claim as a whole is analyzed 

to determine whether any element, or 

combination of elements, is sufficient to 

ensure that the claim amounts to 

significantly more than the exception. 

Although a computer acts as the 

intermediary in the claimed method, the 

claims do no more than implement the 

abstract idea of intermediated 

settlement on a generic computer. Using 

a computer to create and maintain 

‘‘shadow’’ accounts amounts to 

electronic recordkeeping, which is one 

of the most basic functions of a 

computer. The same is true with respect 

to the use of a computer to obtain data, 

adjust account balances, and issue 

automated instructions. All of these 

computer functions are ‘‘wellunderstood, routine, conventional 

activit[ies]’’ previously known to the 

industry. Each step does no more than 

require a generic computer to perform 

generic computer functions. Considered 

as an ordered combination, the 

computer components of the method 

add nothing that is not already present 

when the steps are considered 

separately, and thus simply recite the 

concept of intermediated settlement as 

performed by a generic computer. The 

claims do not purport to improve the 

functioning of the computer itself, or to 

improve any other technology or 

technical field. Use of an unspecified, 

generic computer does not transform an 

abstract idea into a patent-eligible 

invention. Thus, the claim does not 

amount to significantly more than the 

abstract idea itself (Step 2B: NO). The 

claim is not eligible and should be 

rejected under 35 U.S.C. 101. 

Representative System Claim (U.S. 

Patent No. 7,725,375) 

Claim 26. A data processing system to 

enable the exchange of an obligation between 

parties, the system comprising: 

a communications controller, 

a first party device, coupled to said 

communications controller, 

a data storage unit having stored therein 

(a) information about a first account for a 

first party, independent from a second 

account maintained by a first exchange 

institution, and 

(b) information about a third account for a 

second party, independent from a fourth 

account maintained by a second exchange 

institution; and 

a computer, coupled to said data storage 

unit and said communications controller, 

that is configured to 

(a) receive a transaction from said first 

party device via said communications 

controller; 

(b) electronically adjust said first account 

and said third account in order to effect an 

exchange obligation arising from said 

transaction between said first party and said 

second party after ensuring that said first 

party and/or said second party have adequate 

value in said first account and/or said third 

account, respectively; and 

(c) generate an instruction to said first 

exchange institution and/or said second 

exchange institution to adjust said second 

account and/or said fourth account in 

accordance with the adjustment of said first 

account and/or third account, wherein said 

instruction being an irrevocable, time 

invariant obligation placed on said first 

exchange institution and/or said second 

exchange institution. 

Analysis: The claim is directed to a 

statutory category, i.e., a machine (Step 

1: YES). As discussed for the method 

claim, the claim recites the concept of 

intermediated settlement and is directed 

to an abstract idea (Step 2A: YES). 

Looking again to see what additional 

features are recited in the claim, the 

system includes a communications 

controller, a first party device, a data 

storage device, and a computer. The 

claimed hardware is generic hardware 

that nearly every computer will include. 

None of the hardware offers a 

meaningful limitation beyond generally 

linking the system to a particular 

technological environment, that is, 

implementation via computers. Put 

another way, the system claims are no 

different from the method claims in 

substance; the method claims recite the 

abstract idea implemented on a generic 

computer, while the system claims 

recite a handful of generic computer 

components configured to implement 

the same idea. The claim does not 

amount to significantly more than the 

underlying abstract idea (Step 2B: NO). 

The claim is not eligible and should be 

rejected under 35 U.S.C. 101. 

IV. Summaries of Court Decisions 

Relating to Laws of Nature, Natural 

Phenomena, and Abstract Ideas 

The following brief summaries are 

taken from decisions from the Supreme 

Court and the Federal Circuit in which 

claims were analyzed with respect to 

judicial exceptions to determine subject 

matter eligibility. Along with the 

examples in section III, these decisions 

demonstrate the various terms used by 

the courts to describe the exceptions 


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and are provided simply to illustrate 

some of the different types of concepts 

found to fall within the exceptions. It 

should be noted that the courts’ 

analyses in these decisions do not 

necessarily follow the eligibility 

framework explained in this Interim 

Eligibility Guidance as most of the cases 

were decided prior to Alice Corp. 

Therefore, instead of applying the 

eligibility analysis set forth in this 

Interim Eligibility Guidance to the facts 

of the decisions, a short description of 

the court’s decision is provided for 

background purposes only. When 

considering these decisions, it is 

important to remember that the mere 

presence of an exception does not 

necessarily render a claim ineligible. 

Part A presents several decisions from 

the Supreme Court, Part B presents 

several decisions from the Federal 

Circuit from 2010—2014 that dealt with 

abstract ideas, and Part C presents 

decisions from the Federal Circuit 

relating to abstract ideas since the Alice 

Corp. decision. Although the very small 

set of decisions from the Federal Circuit 

since Alice Corp. have resulted in 

findings of ineligibility, it should be 

recognized that the Supreme Court did 

not create a per se excluded category of 

subject matter, such as software or 

business methods, nor did it impose any 

special requirements for eligibility of 

software or business methods. 

A. Supreme Court Decisions 

1. O’Reilly v. Morse (U.S. Reissue Patent 

No. RE 117) 

Claim 6. The claim was interpreted by the 

Supreme Court as a system of signs (signals) 

by closing a galvanic circuit rapidly for 

telegraphing, combined with machinery to 

record the signs. 

Claim 8. I do not propose to limit myself 

to the specific machinery, or parts of 

machinery, . . . the essence of my invention 

being the use of the motive power of the 

electric or galvanic current, which I call 

electro-magnetism, however developed, for 

making or printing intelligible characters, 

signs, or letters, at any distances, being a new 

application of that power. . . 

The claims are to the process of using 

electromagnetism to produce 

distinguishable signs for telegraphy, and 

in particular to print intelligible 

characters at any distance. While the 

format of the claims is outdated, it can 

be seen that claim 6 recites the system 

of signs in combination with the 

machinery for recording, which was 

found eligible. In contrast, claim 8 

recites the use of electromagnetism 

without limits on the machinery for 

recording, which was found ineligible. 

The discovery of electromagnetism, 

which is a natural phenomenon, is not 

patentable by itself. 

2. Tilghman v. Proctor (U.S. Patent No. 

11,766) 

The claim was interpreted by the Supreme 

Court as the process of subjecting to a high 

degree of heat a mixture continually kept up, 

of nearly equal quantities of fat and water in 

a convenient vessel strong enough to resist 

the effort of the mixture to convert itself into 

steam. 

The claim is founded upon the 

chemical principle or scientific fact that 

the elements of neutral fat require that 

they be severally united with an atomic 

equivalent of water in order to separate 

from each other and become free. 

Although the claim recites the chemical 

union between the fatty elements and 

water, it is not directed to the mere 

principle. The claim is directed instead 

to a particular mode of bringing about 

the desired chemical union, i.e., by 

heating the water under such pressure 

that the water does not become steam, 

and accordingly was found eligible. 

3. Mackay Radio & Telegraph Co. v. 

Radio Corp. of America (U.S. Patent No. 

1,974,387) 

Claim 15. An antenna comprising a pair of 

relatively long conductors disposed with 

respect to each other at an angle substantially 

equal to twice 50.9(l/l)¥0.513 degrees, l being 

the length of the wire and l the operating 

wave length in like units, and means in 

circuit with said antenna for exciting the 

conductors in phase opposition whereby 

standing waves of opposite instantaneous 

polarity are formed on the conductors 

throughout their length. 

The claim is to an antenna system 

utilizing standing wave phenomena. To 

obtain the best directional radio 

propagation by a V type antenna, a 

mathematical formula is used to arrange 

the angle of the wires, their length, and 

the length of the wave propagated. The 

claim practically applies the 

mathematical formula to configure a 

particular antenna and thus was found 

eligible. 

4. Gottschalk v. Benson 

Claim 8. The method of converting signals 

from binary coded decimal form into binary 

which comprises the steps of: 

(1) storing the binary coded decimal 

signals in a reentrant shift register, 

(2) shifting the signals to the right by at 

least three places, until there is a binary ‘1’ 

in the second position of said register, 

(3) masking out said binary ‘1’ in said 

second position of said register, 

(4) adding a binary ‘1’ to the first position 

of said register, 

(5) shifting the signals to the left by two 

positions, 

(6) adding a ‘1’ to said first position, and 

(7) shifting the signals to the right by at 

least three positions in preparation for a 

succeeding binary ‘1’ in the second position 

of said register. 

The claim recites a process for 

converting binary-coded-decimal (BCD) 

numerals into pure binary numerals. 

The procedures set forth in the claim are 

a generalized formulation for programs 

to solve mathematical problems of 

converting one form of numerical 

representation to another. The 

mathematical procedures can be carried 

out in existing computers long in use or 

can be performed without a computer. 

The end use is unlimited. The process 

claim was found to be so abstract and 

sweeping that it covered both known 

and unknown uses of the BCD to pure 

binary conversion. The mathematical 

formula in the claim has no substantial 

practical application except in 

connection with a digital computer, and 

thus the court found the claim ineligible 

as it would in effect be a patent on the 

algorithm itself. 

5. Bilski v. Kappos 

Claim 1. A method for managing the 

consumption risk costs of a commodity sold 

by a commodity provider at a fixed price 

comprising the steps of: 

(a) initiating a series of transactions 

between said commodity provider and 

consumers of said commodity wherein said 

consumers purchase said commodity at a 

fixed rate based upon historical averages, 

said fixed rate corresponding to a risk 

position of said consumer; 

(b) identifying market participants for said 

commodity having a counter-risk position to 

said consumers; and 

(c) initiating a series of transactions 

between said commodity provider and said 

market participants at a second fixed rate 

such that said series of market participant 

transactions balances the risk position of said 

series of consumer transactions. 

The claim explains the basic concept 

of hedging, or protecting against risk. 

The court found that the concept of 

hedging is an unpatentable abstract 

idea, just like the algorithms at issue in 

Benson and Flook. A dependent claim 

that narrows the concept to a 

mathematical formula was similarly 

found to be an abstract idea. The other 

dependent claims are broad examples of 

how hedging can be used in 

commodities and energy markets. 

Limiting an abstract idea to one field of 

use or adding token postsolution 

components does not make the concept 

patentable. The claims were found 

ineligible. 


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46SiRF Tech. v. ITC, 601 F.3d 1319 (Fed. Cir. 

2010). 

47Research Corp. Tech. v. Microsoft Corp., 627 

F.3d 859 (Fed. Cir. 2010). 

B. Abstract Idea Decisions From the 

Federal Circuit Prior to Alice Corp. 

(2010–2014) 

1. SiRF Technology v. ITC46 (U.S. 

Patent No. 6,417,801) 

Claim 1. A method for calculating an 

absolute position of a GPS receiver and an 

absolute time of reception of satellite signals 

comprising: 

providing pseudoranges that estimate the 

range of the GPS receiver to a plurality of 

GPS satellites; 

providing an estimate of an absolute time 

of reception of a plurality of satellite signals; 

providing an estimate of a position of the 

GPS receiver; 

providing satellite ephemeris data; 

computing absolute position and absolute 

time using said pseudoranges by updating 

said estimate of an absolute time and the 

estimate of position of the GPS receiver. 

GPS is a satellite navigation system 

comprising satellites orbiting the Earth 

that permits a GPS-enabled receiver to 

detect signals from at least four satellites 

and use that information to calculate its 

distance from each satellite and thus its 

precise position on Earth through 

trilateration. The claim sets forth the 

steps of calculating the absolute 

position, which is a mathematical 

concept. The court interpreted the claim 

such that the method could not be 

performed without a GPS receiver, 

noting that the preamble expressly 

states ‘‘calculating an absolute position 

of a GPS receiver’’ and that a GPS 

receiver is required to generate 

pseudoranges and to determine its 

position. With this interpretation, the 

presence of the GPS receiver in the 

claim places a meaningful limit on the 

scope of the claim. It is essential to the 

operation of the claimed method and 

plays a significant part in permitting the 

claimed method to be performed. As 

such, although performance of the claim 

requires calculations, the claim was 

found eligible. 

2. Research Corp. Tech. v. Microsoft 

Corp.47 (U.S. Patent No. 5,111,310) 

Claim 1. A method for the halftoning of 

gray scale images by utilizing a pixel-by-pixel 

comparison of the image against a blue noise 

mask in which the blue noise mask is 

comprised of a random non-deterministic, 

non-white noise single valued function 

which is designed to produce visually 

pleasing dot profiles when thresholded at 

any level of said gray scale images. 

The claim is to digital image 

halftoning. Halftoning techniques allow 

computers to present many shades and 

color tones with a limited number of 

pixels, which allows computer displays 

and printers to render an approximation 

of an image by using fewer colors or 

shades of gray than the original image. 

One method of generating a digital 

halftoned image is called 

‘‘thresholding’’ that uses a twodimensional array called a ‘‘mask.’’ The 

claimed method incorporates algorithms 

and formulas that control the masks and 

halftoning, but apply them in a 

technique that improves the generated 

digital halftoned image. The invention 

presents functional and palpable 

applications in the field of computer 

technology with specific applications or 

improvements to technologies in the 

marketplace. So, although the claimed 

method uses algorithms and formulas, 

the claim was found eligible. 

3. Dealertrack Inc. v. Huber (U.S. Patent 

No. 7,181,427) 

Claim 1. A computer aided method of 

managing a credit application, the method 

comprising the steps of: 

[A] receiving credit application data from 

a remote application entry and display 

device; 

[B] selectively forwarding the credit 

application data to remote funding source 

terminal devices; 

[C] forwarding funding decision data from 

at least one of the remote funding source 

terminal devices to the remote application 

entry and display device; 

[D] wherein the selectively forwarding the 

credit application data step further 

comprises: 

[D1] sending at least a portion of a credit 

application to more than one of said remote 

funding sources substantially at the same 

time; 

[D2] sending at least a portion of a credit 

application to more than one of said remote 

funding sources sequentially until a finding 

source returns a positive funding decision; 

[D3] sending at least a portion of a credit 

application to a first one of said remote 

funding sources, and then, after a 

predetermined time, sending to at least one 

other remote funding source, until one of the 

finding sources returns a positive funding 

decision or until all funding sources have 

been exhausted; or, 

[D4] sending the credit application from a 

first remote funding source to a second 

remote finding source if the first funding 

source declines to approve the credit 

application. 

The court reduced the claim to its 

most basic concept which was 

characterized as receiving data from one 

source (step A), selectively forwarding 

the data (step B, performed according to 

step D), and forwarding reply data to the 

first source (step C). This basic concept 

of processing information through a 

clearinghouse was found to be an 

abstract idea, similar to Bilski’s basic 

concept of hedging. The court held that 

simply adding a ‘‘computer-aided’’ 

limitation to a claim covering an 

abstract concept, without more, does not 

sufficiently limit the claim. The claim 

was found ineligible. 

4. SmartGene, Inc. v. Advanced 

Biological Laboratories, SA (U.S. Patent 

No. 6,081,786) 

Claim 1. A method for guiding the 

selection of a therapeutic treatment regimen 

for a patient with a known disease or medical 

condition, said method comprising: 

(a) providing patient information to a 

computing device comprising: 

a first knowledge base comprising a 

plurality of different therapeutic treatment 

regimens for said disease or medical 

condition; 

a second knowledge base comprising a 

plurality of expert rules for evaluating and 

selecting a therapeutic treatment regimen for 

said disease or medical condition; 

a third knowledge base comprising 

advisory information useful for the treatment 

of a patient with different constituents of said 

different therapeutic treatment regimens; and 

(b) generating in said computing device a 

ranked listing of available therapeutic 

treatment regimens for said patient; and 

(c) generating in said computing device 

advisory information for one or more 

therapeutic treatment regimens in said 

ranked listing based on said patient 

information and said expert rules. 

The claims set forth the steps of 

comparing new and stored information 

and using rules to identify medical 

options. Claim 1 does no more than call 

on a ‘‘computing device’’ with basic 

functionality for comparing stored and 

input data and rules, to do what doctors 

do routinely. The court concluded that 

these are familiar mental steps 

performed by or with a computer, and 

as such the claim was found ineligible. 

5. Cyberfone Systems v. CNN Interactive 

Group (U.S. Patent No. 8,019,060) 

Claim 1. A method, comprising: 

obtaining data transaction information 

entered on a telephone from a single 

transmission from said telephone; 

forming a plurality of different exploded 

data transactions for the single transmission, 

said plurality of different exploded data 

transaction indicative of a single data 

transaction, each of said exploded data 

transactions having different data that is 

intended for a different destination that is 

included as part of the exploded data 

transactions, and each of said exploded data 

transactions formed based on said data 

transaction information from said single 

transmission, so that different data from the 

single data transmission is separated and sent 

to different destinations; and 

sending said different exploded data 

transactions over a channel to said different 

destinations, all based on said data 

transaction information entered in said single 

transmission. 

Using categories to organize, store, 

and transmit information is wellVerDate Sep<11>2014 16:25 Dec 15, 2014 Jkt 235001 PO 00000 Frm 00046 Fmt 4700 Sfmt 4700 E:\FR\FM\16DER1.SGM 16DER1

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established. Here, the well-known 

concept of categorical data storage, i.e., 

the idea of collecting information in 

classified form, then separating and 

transmitting that information according 

to its classification, is an abstract idea. 

The claim was found ineligible. 

C. Abstract Idea Decisions From the 

Federal Circuit Since Alice Corp. 

1. Digitech Image Tech., LLC v. 

Electronics for Imaging, Inc. (U.S. Patent 

No. 6,128,415) 

Claim 10. A method of generating a device 

profile that describes properties of a device 

in a digital image reproduction system for 

capturing, transforming or rendering an 

image, said method comprising: 

generating first data for describing a device 

dependent transformation of color 

information content of the image to a device 

independent color space through use of 

measured chromatic stimuli and device 

response characteristic functions; 

generating second data for describing a 

device dependent transformation of spatial 

information content of the image in said 

device independent color space through use 

of spatial stimuli and device response 

characteristic functions; 

and combining said first and second data 

into the device profile. 

The court found the claim to be an 

abstract idea because it describes a 

process of organizing information 

through mathematical correlations and 

is not tied to a specific structure or 

machine. The claim recites the process 

of taking two data sets and combining 

them into a single data set, the device 

profile. The two data sets are generated 

by taking existing information—i.e., 

measured chromatic stimuli, spatial 

stimuli, and device response 

characteristic functions—and organizing 

this information into a new form. The 

claim language does not expressly tie 

the method to an image processor. It 

generically recites a process of 

combining two data sets into the device 

profile; it does not claim the processor’s 

use of that profile in the capturing, 

transforming, or rendering of a digital 

image. Without additional limitations, a 

process that employs mathematical 

algorithms to manipulate existing 

information to generate additional 

information is not patent eligible. All of 

the claims were found ineligible. 

2. Planet Bingo, LLC v. VKGS LLC (U.S. 

Patent No. 6,398,646) 

Claim 1. A system for managing a game of 

Bingo which comprises: 

(a) a computer with a central processing 

unit (CPU) and with a memory and with a 

printer connected to the CPU; 

(b) an input and output terminal connected 

to the CPU and memory of the computer; and 

(c) a program in the computer enabling: 

(i) input of at least two sets of Bingo 

numbers which are preselected by a player to 

be played in at least one selected game of 

Bingo in a future period of time; 

(ii) storage of the sets of Bingo numbers 

which are preselected by the player as a 

group in the memory of the computer; 

(iii) assignment by the computer of a player 

identifier unique to the player for the group 

having the sets of Bingo numbers which are 

preselected by the player wherein the player 

identifier is assigned to the group for 

multiple sessions of Bingo; 

(iv) retrieval of the group using the player 

identifier; 

(v) selection from the group by the player 

of at least one of the sets of Bingo numbers 

preselected by the player and stored in the 

memory of the computer as the group for 

play in a selected game of Bingo in a specific 

session of Bingo wherein a number of sets of 

Bingo numbers selected for play in the 

selected game of Bingo is less than a total 

number of sets of Bingo numbers in the 

group; 

(vi) addition by the computer of a control 

number for each set of Bingo numbers 

selected for play in the selected game of 

Bingo; 

(vii) output of a receipt with the control 

number, the set of Bingo numbers which is 

preselected and selected by the player, a 

price for the set of Bingo numbers which is 

preselected, a date of the game of Bingo and 

optionally a computer identification number; 

and 

(viii) output for verification of a winning 

set of Bingo numbers by means of the control 

number which is input into the computer by 

a manager of the game of Bingo. 

The court found the claims to be 

directed to the abstract idea of solving 

a tampering problem and also 

minimizing other security risks during 

bingo ticket purchases. The claims 

relate to managing a bingo game while 

allowing a player to repeatedly play the 

same sets of numbers in multiple 

sessions. Managing the game of bingo 

consists solely of mental steps which 

can be carried out by a human using pen 

and paper. The claims do not impose 

any requirements that would make the 

invention impossible to carry out 

manually. Although not drawn to the 

same subject matter at issue in Bilski 

and Alice Corp., the court found 

managing a game of bingo to be similar 

to the kind of organizing human activity 

at issue in Alice Corp. The claims recite 

a generic computer implementation of 

the abstract idea and a program that is 

used for the generic functions of storing, 

retrieving, and verifying a chosen set of 

bingo numbers against a winning set of 

bingo numbers. There is no inventive 

concept sufficient to transform the 

claimed subject matter into a patenteligible application. The court found no 

meaningful distinction between the 

method and system claims. All of the 

claims were found ineligible. 

3. buySAFE, Inc. v. Google, Inc. (U.S. 

Patent No. 7,644,019) 

Claim 1. A method, comprising: 

receiving, by at least one computer 

application program running on a computer 

of a safe transaction service provider, a 

request from a first party for obtaining a 

transaction performance guaranty service 

with respect to an online commercial 

transaction following closing of the online 

commercial transaction; 

processing, by at least one computer 

application program running on the safe 

transaction service provider computer, the 

request by underwriting the first party in 

order to provide the transaction performance 

guaranty service to the first party, 

wherein the computer of the safe 

transaction service provider offers, via a 

computer network, the transaction 

performance guaranty service that binds a 

transaction performance guaranty to the 

online commercial transaction involving the 

first party to guarantee the performance of 

the first party following closing of the online 

commercial transaction. 

Claim 14. The method according to claim 

1, wherein the transaction performance 

guaranty is provided in one form of: a surety 

bond; a specialized bank guaranty; a 

specialized insurance policy; and a safe 

transaction guaranty provided by the safe 

transaction service provider. 

Relying on Bilski in which an abstract 

idea was found in certain arrangements 

involving contractual relations, the 

court found the claims to be squarely 

about creating a contractual 

relationship—a ‘‘transaction 

performance guaranty’’—that is beyond 

question of ancient lineage. The claims’ 

invocation of computers adds no 

inventive concept, with the computer 

functionality being generic. The 

transactions being performed online, at 

best, limits the use of the abstract 

guaranty idea to a particular 

technological environment. Although, 

dependent claim 14 narrows the abstract 

idea to particular types of relationships, 

that does not change the analysis 

because it does not make the idea nonabstract. The claims to the computer 

readable medium encoded with 

instructions to carry out the method 

were treated in the same way. All of the 

claims were found ineligible. 

4. Ultramercial, LLC v. Hulu, LLC and 

WildTangent (U.S. Patent No. 7,346,545) 

Claim 1: A method for distribution of 

products over the Internet via a facilitator, 

said method comprising the steps of: 

a first step of receiving, from a content 

provider, media products that are covered by 

intellectual-property rights protection and 

are available for purchase, wherein each said 

media product being comprised of at least 

one of text data, music data, and video data; 

a second step of selecting a sponsor 

message to be associated with the media 

product, said sponsor message being selected 


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74632 Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations 

from a plurality of sponsor messages, said 

second step including accessing an activity 

log to verify that the total number of times 

which the sponsor message has been 

previously presented is less than the number 

of transaction cycles contracted by the 

sponsor of the sponsor message; 

a third step of providing the media product 

for sale at an Internet Web site; 

a fourth step of restricting general public 

access to said media product; 

a fifth step of offering to a consumer access 

to the media product without charge to the 

consumer on the precondition that the 

consumer views the sponsor message; 

a sixth step of receiving from the consumer 

a request to view the sponsor message, 

wherein the consumer submits said request 

in response to being offered access to the 

media product; 

a seventh step of, in response to receiving 

the request from the consumer, facilitating 

the display of a sponsor message to the 

consumer; 

an eighth step of, if the sponsor message 

is not an interactive message, allowing said 

consumer access to said media product after 

said step of facilitating the display of said 

sponsor message; 

a ninth step of, if the sponsor message is 

an interactive message, presenting at least 

one query to the consumer and allowing said 

consumer access to said media product after 

receiving a response to said at least one 

query; 

a tenth step of recording the transaction 

event to the activity log, said tenth step 

including updating the total number of times 

the sponsor message has been presented; and 

an eleventh step of receiving payment from 

the sponsor of the sponsor message 

displayed. 

Using the Alice Corp. framework, the 

court first determined whether the 

claims at issue are directed to a patentineligible concept. The court found that 

the ordered combination of the eleven 

steps recites ‘‘an abstraction—an idea, 

having no particular concrete or tangible 

form’’ noting that the majority of 

limitations describe only the abstract 

idea of showing an advertisement before 

delivering content. The court then 

turned to the next step of the analysis 

to determine whether the claims do 

significantly more than simply describe 

the abstract method. The court 

explained that consulting and updating 

an activity log represent insignificant 

‘‘data-gathering steps,’’ restricting 

public access represents only 

insignificant ‘‘[pre]-solution activity,’’ 

and narrowing the idea to the Internet 

is an attempt to limit the use of the 

abstract idea ‘‘to a particular 

technological environment.’’ Viewed 

both individually and as an ordered 

combination, the claimed steps were 

found insufficient to supply an 

inventive concept because the steps are 

conventional and specified at a high 

level of generality. The court concluded 

that the claim limitations do not 

transform the abstract idea that they 

recite into patent-eligible subject matter 

because ‘‘the claims simply instruct the 

practitioner to implement the abstract 

idea with routine, conventional 

activity.’’ All of the claims were found 

ineligible. 

5. DDR Holdings, LLC v. Hotels.com, 

L.P. (U.S. Patent No. 7,818,399) 

Claim 19: A system useful in an outsource 

provider serving Web pages offering 

commercial opportunities, the system 

comprising: 

(a) a computer store containing data, for 

each of a plurality of first Web pages, 

defining a plurality of visually perceptible 

elements, which visually perceptible 

elements correspond to the plurality of first 

Web pages; 

(i) wherein each of the first Web pages 

belongs to one of a plurality of Web page 

owners; 

(ii) wherein each of the first Web pages 

displays at least one active link associated 

with a commerce object associated with a 

buying opportunity of a selected one of a 

plurality of merchants; and 

(iii) wherein the selected merchant, the 

outsource provider, and the owner of the first 

Web page displaying the associated link are 

each third parties with respect to one other; 

(b) a computer server at the outsource 

provider, which computer server is coupled 

to the computer store and programmed to: 

(i) receive from the web browser of a 

computer user a signal indicating activation 

of one of the links displayed by one of the 

first Web pages; 

(ii) automatically identify as the source 

page the one of the first Web pages on which 

the link has been activated; 

(iii) in response to identification of the 

source page, automatically retrieve the stored 

data corresponding to the source page; and 

(iv) using the data retrieved, automatically 

generate and transmit to the web browser a 

second Web page that displays: (A) 

Information associated with the commerce 

object associated with the link that has been 

activated, and (B) the plurality of visually 

perceptible elements visually corresponding 

to the source page. 

The court found the claim patent 

eligible under the Alice Corp. 

framework. First, the court noted that, 

while in some instances abstract ideas 

are plainly identifiable and divisible 

from generic computer limitations 

recited by the remainder of a claim, in 

this case, identifying the precise nature 

of the abstract idea is not as 

straightforward. The court considered 

several proposed characterizations of 

the abstract idea, including ‘‘‘making 

two Web pages look the same,’ 

‘syndicated commerce on the computer 

using the Internet’ and ‘making two ecommerce Web pages look alike by 

using licensed trademarks, logos, color 

schemes and layouts,’’’ and ‘‘that an 

online merchant’s sales can be increased 

if two Web pages have the same ‘look 

and feel.’’’ The court did not clearly 

indicate whether the claim was directed 

to one or more of these proposed 

abstract ideas, but stated that ‘‘under 

any of these characterizations of the 

abstract idea, the ‘399 patent’s claims 

satisfy Mayo/Alice step two.’’ 

The court then explained its analysis 

of the second Mayo/Alice step, where it 

determined that the claim amounted to 

an inventive concept and thus was 

patent eligible. In particular, the claim 

addresses the problem of retaining Web 

site visitors from being diverted from a 

host’s Web site to an advertiser’s Web 

site, for which ‘‘the claimed solution is 

necessarily rooted in computer 

technology in order to overcome a 

problem specifically arising in the realm 

of computer networks.’’ The claim 

includes additional elements including 

‘‘1) stor[ing] ‘visually perceptible 

elements’ corresponding to numerous 

host Web sites in a database, with each 

of the host Web sites displaying at least 

one link associated with a product or 

service of a third-party merchant, 2) on 

activation of this link by a Web site 

visitor, automatically identif[ying] the 

host, and 3) instruct[ing] an Internet 

web server of an ‘outsource provider’ to 

construct and serve to the visitor a new, 

hybrid Web page that merges content 

associated with the products of the 

third-party merchant with the stored 

‘visually perceptible elements’ from the 

identified host Web site.’’ The court 

held that, unlike in Ultramercial, the 

claim does not generically recite ‘‘use 

the Internet’’ to perform a business 

practice, but instead recites a specific 

way to automate the creation of a 

composite Web page by an outsource 

provider that incorporates elements 

from multiple sources in order to solve 

a problem faced by Web sites on the 

Internet. Therefore, the court held that 

the claim is patent eligible. 

Guidelines for Written Comments 

It would be helpful to the USPTO if 

written comments include information 

about: (1) The name and affiliation of 

the individual responding; and (2) an 

indication of whether comments offered 

represent views of the respondent’s 

organization or are the respondent’s 

personal views. Information provided in 

response to this request for comments 

will be made part of a public record and 

may be available via the Internet. In 

view of this, parties should not submit 

information that they do not wish to be 

publicly disclosed or made 

electronically accessible. Parties who 

would like to rely on confidential 

information to illustrate a point are 

requested to summarize or otherwise 


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Federal Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 / Rules and Regulations 74633 

submit the information in a way that 

will permit its public disclosure. 

Dated: December 10, 2014. 

Michelle K. Lee, 

Deputy Under Secretary of Commerce for 

Intellectual Property and Deputy Director of 

the United States Patent and Trademark 

Office. 

[FR Doc. 2014–29414 Filed 12–15–14; 8:45 am] 

BILLING CODE 3510–16–P 

DEPARTMENT OF COMMERCE 

United States Patent and Trademark 

Office 

37 CFR Part 2 

[Docket No. PTO–T–2014–0011] 

RIN 0651–AC94 

Reduction of Fees for Trademark 

Applications and Renewals 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Final rule. 

SUMMARY: The United States Patent and 

Trademark Office (‘‘Office’’ or 

‘‘USPTO’’) is amending its regulations 

to reduce certain trademark fees, as 

authorized by the Leahy-Smith America 

Invents Act (‘‘AIA’’). The reductions 

will reduce total trademark fee 

collections and promote efficiency for 

the USPTO and customers. The 

reductions also will further USPTO 

strategic objectives to increase the endto-end electronic processing of 

trademark applications by offering 

additional electronic application 

processing. 

DATES: The changes in this final rule are 

effective on January 17, 2015. 

FOR FURTHER INFORMATION CONTACT: 

Cynthia C. Lynch, Office of the Deputy 

Commissioner for Trademark 

Examination Policy, by email at 

TMPolicy@uspto.gov, or by telephone at 

(571) 272–8742. 

SUPPLEMENTARY INFORMATION: Executive 

Summary: Purpose: Section 10 of the 

AIA authorizes the Director of the 

USPTO (‘‘Director’’) to set or adjust by 

rule any fee established, authorized, or 

charged under the Trademark Act of 

1946 (15 U.S.C. 1051 et seq.) for any 

services performed by, or materials 

furnished by, the Office. See Section 10 

of the AIA, Pub. L. 112–29, 125 Stat. at 

316–17. 

Section 10(c) of the AIA authorizes 

the Director to consult with the 

Trademark Public Advisory Committee 

(‘‘TPAC’’) on the advisability of 

reducing trademark fees and, following 

the required consultation, to reduce 

such fees. See Section 10(c) of the AIA, 

Pub. L. 112–29, 125 Stat. at 317. The 

Director consulted with the TPAC and 

thereafter determined that, in order to 

both improve the alignment of Office 

costs with revenues and incentivize 

electronic communications, it was 

advisable to propose reductions in the 

filing fees for: (1) Trademark, 

certification mark, collective 

membership mark, and collective 

trademark applications for registration 

on the Principal or Supplemental 

Register that are filed using the 

Trademark Electronic Application 

System (‘‘TEAS’’), if applicants 

authorize email communication and file 

specified documents electronically 

throughout the application process; (2) 

TEAS Plus applications for registration; 

and (3) TEAS applications for renewal 

of a registration. In addition, the 

reduction would also apply to TEAS 

requests for transformation of an 

extension of protection to the United 

States into a U.S. application, filed 

pursuant to 37 CFR 7.31. 

Thereafter, a proposed rule was 

published in the Federal Register on 

May 9, 2014, at 79 FR 26664, and in the 

Official Gazette on June 3, 2014. The 

USPTO received comments from three 

intellectual property organizations and 

three attorneys and/or law firms. These 

comments are posted on the USPTO’s 

Web site at http://www.uspto.gov/

trademarks/notices/TEAS_RF_

comments.jsp and are addressed below. 

Prior to consulting with the TPAC, the 

USPTO also published a notice of 

inquiry to provide the public, including 

user groups, with an opportunity to 

comment on possible adjustments to 

trademark application fees (77 FR 49426 

(Aug. 16, 2012)). The public comments 

overwhelmingly favored a fee reduction, 

and many expressed a desire for a 

lower-cost electronic filing option 

without any restrictions on the nature of 

the identification of goods and services, 

as is required under TEAS Plus. 

The reduced fees will help to: (1) 

Continue with an appropriate and 

sustainable funding model; (2) support 

strategic objectives relating to online 

filing, electronic file management, and 

workflow; and (3) improve efficiency for 

USPTO operations and customers. The 

reductions will benefit the public by 

lowering the costs of seeking and 

renewing federal registration, including 

advantages to individual and pro se 

filers, who make greater use of lowercost filing options. In addition, the rule 

includes an additional filing option for 

meeting applicants’ needs and 

preferences. 

General Comments 

Comment: All commenters expressed 

support of the USPTO’s efforts to 

increase the volume of end-to-end 

electronic processing of trademark 

applications and agreed that the 

proposed fee reductions will make filing 

for individuals and smaller entities 

more accessible and promote greater 

efficiency through electronic filing and 

communication. 

Response: The USPTO appreciates the 

commenters’ support of the general 

objectives of the rule changes. 

Comment: One commenter suggested 

that the USPTO take additional steps to 

both further the USPTO’s strategic 

objective and reduce burdens on small 

businesses. In particular, the commenter 

recommended that the USPTO collect 

and track the filing and renewal 

information related to small businesses 

and provide reduced filing fees to small 

entities and applicants that are part of 

business incubators and other such 

organizations. In addition, the 

commenter opined that providing small 

entities with reduced fees for renewals 

and maintenance would help 

incentivize registrants to maintain and 

renew their marks. 

Response: The USPTO appreciates the 

commenter’s suggestions and will 

consider them in the future, but notes 

that they are outside the scope of the 

current rulemaking. Moreover, the 

USPTO has considered whether and 

how it is appropriate to reduce any 

burden on small businesses through 

increased flexibility. The final rules 

provide streamlined and simplified 

procedures for all small entities (and 

others), given the ease of filing 

electronically through TEAS and 

communicating by email. In addition, 

the fee reductions promote greater 

efficiency from electronic filing and 

communication, as the procedures are 

simpler and not burdensome. 

Comment: One commenter noted that 

although the data that becomes the 

equivalent of an application under 

Section 66(a) of the Trademark Act is 

not submitted by applicants directly, the 

Office’s goals of increasing efficiency 

through electronic correspondence can 

be achieved with such applications by 

requiring that the applicant use TEAS to 

respond to provisional refusals and for 

subsequent prosecution. 

Response: The USPTO notes that the 

reduced-fee option of filing using TEAS 

Plus is not currently available for 

requests for an extension of protection 

to the United States, i.e., a Section 66(a) 

application, 15 U.S.C. 1141f(a), nor will 

the TEAS RF option be available for 

these applications. The USPTO has not 


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