USPTO updates subject matter eligibility guidance in the MPEP
The United States Patent and Trademark Office (USPTO) today issued an advanced notice of change to the Manual of Patent Examining Procedure (MPEP). This update reflects the recent precedential Appeals Review Panel decision in Ex Parte Desjardins, which addressed improvements in the functioning of a computer, or an improvement to other technology or technical field, in light of the Federal Circuit’s reasoning in Enfish, LLC v. Microsoft Corp.
The notice explains how examiners should evaluate claims that recite improvements to technology, computer functionality, data structures, learning models, and other applied fields when conducting an eligibility analysis under 35 U.S.C. § 101. The updates to the MPEP reaffirm that examiners must consider the claimed invention as a whole, including any described technological advance, when determining whether the claim integrates a judicial exception into a practical application.
The guidance is provided to distinguish subject matter eligibility from patentability, as §§ 102, 103, and 112 remain the primary statutory bases for assessing novelty, nonobviousness, and disclosure requirements. Eligibility must be evaluated under the existing Alice/Mayo framework, as discussed in the MPEP, informed by the description of any asserted technological improvement in the specification.
This update complements the memoranda issued yesterday regarding voluntary Subject Matter Eligibility Declarations (SMEDs) under Rule 132. While SMEDs provide a mechanism for applicants to submit evidence relevant to eligibility, today’s MPEP update addresses the examiner’s analytical framework itself, regardless of whether additional evidence is submitted.
Scope of the MPEP Update
The MPEP revisions:
- Update § 2106 and associated sections to reflect controlling case law on technological improvements.
- Provide further explanation of Step 2A, Prong Two and the evaluation of asserted improvements to technology or technical fields.
- Include new examples based on the decision in Ex Parte Desjardins addressing applied technologies, computer functionality, structured data processing, and learning systems.
- Clarify the examiner’s responsibilities when assessing whether a claim improves technology, and how such improvements may satisfy the eligibility standards.
The updated guidance is effective immediately and will be included in the MPEP in due course. Additional training materials will be provided to the Examining Corps and made available to the public.
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