In this video, I discuss recent USPTO guidance on subject matter eligibility. The USPTO recently came out with guidance on what is “abstract” subject matter. Abstract subject matter are claims directed to:

– mathematical algorithms
– organizing human behavior
– mental processes

The general rule is that abstract claims are not patentable. So as a drafting tip, it may be possible to engineer claims to avoid being labeled as “abstract.” But if this is not possible, abstract subject matter can be patentable if the claims are “integrated into a practical application.” As a shortcut, a practical application should be a technical solution to a problem.

This reiterates the importance of drafting patents using the problem-solution approach. Patent drafters should define a problem the invention solves, and then the invention should describe a solution to the problem. This should be a technical solution, that cannot be done with pen and paper. A technical solution uses some kind of tool or a computer to solve the problem.

For further information, please contact me at andrew@berksiplaw.com.