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Understanding the Limits of the 2019 Revised Subject Matter Eligibility Guidance

This is Dan Bell of

I am a US patent lawyer with an undergraduate degree in computer science. I have been helping leading software companies obtain patents on their computer-related inventions for 20 years.

I also help train patent engineering teams to provide patent services supporting lawyers. When trained properly for a particular process, a patent engineering team, managed by the right lawyers, will result in considerable cost savings for clients. The right team of trained engineers can perform some functions of a patent process, better than lawyers. Sometimes the deeper technology insight makes all the difference in the world.

Part of our training responsibility has included teaching engineers how to identify and document legal issues. The engineers perform search, analysis, and drafting. The engineers deliver initial work product and issue spotting to patent lawyers assigned to a project. The lawyer decides which identified issues to raise with the (corporate) client. Lawyers must remain in charge of the process to manage quality, confidentiality, export restrictions, and unauthorized practice of law.

The engineers must be trained to know what the lawyers need. Engineers study issues such as subject matter eligibility (35 USC §101), written description and enablement (35 USC §112), novelty (35 USC §102), obviousness (35 USC §103), prosecution history estoppel, direct infringement, search date verification, freedom to operate, etc. These are just the biggies. There are hundreds of other issues they need to learn depending on the projects they are assigned.

Subject matter eligibility has been one of the most dynamic areas of patent law change over the last decade.

Lawyers are more comfortable with grey areas of reason than engineers and scientists. A legal test that has no consistent basis in reason can be perceived as an insult to intellectual integrity when presented to engineers and scientists. Patent lawyers are scientists so they live in both worlds of law and science. Sometimes it is better to tell engineers and scientists the truth–the king has no clothes.

In 2014, the US Supreme Court (SC) decided Alice Corp. v. CLS Bank (Alice). In Alice, the SC restated, “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U. S. C. §101.

Next, they identified the judicial exceptions. “[L]aws of nature, natural phenomena, and abstract ideas” are basic tools of scientific and technological work, and thus cannot be patented. Allowing monopolization of such tools of human ingenuity via patents might impede innovation more than it would tend to promote it.

The job of the USPTO and the courts has been to identify the difference between claiming the tools of human ingenuity and claiming something that integrates those tools into “something more,” a practical application.

However, as noted in the 2019 Guidance, the Alice test for patent eligibility has proven to be unreliable in practice. Patent lawyers and the USPTO have been unable able to use the Alice test to effectively predict patent subject matter eligibility.

Patent lawyers, the USPTO, and the Federal Circuit have reacted and developed other tests. In one such case, they just compare patent claims in question to patent claims deemed eligible or ineligible in previous court cases. I affectionately call this the duck test. If it looks like a duck, and it quacks like a duck, it is probably a duck. Not very professional sounding I know. But that is the state of the law on the day of this post. 

In practice, the patentee holds their patent claims up next to claims found eligible by the appellate court. They argue that their claims are more like claims found eligible in a previous case. The accused infringer would argue that the claims are more similar to claims found ineligible in a different case. The courts would decide which duck the claims quacked more like.

The lawyer that was able to convince the court that their claims were more like a previously decided case, had the greatest chance of winning their argument in the courts and before the USPTO. Amdocs v. Openet, 841 F.3d 1288 (2016).

The problem with this method of making legal determinations is unpredictability. There is no predictable logic that can be used to ascertain results with any certainty. Only the most egregious claims on either side of the issue are clearly predictable. This uncertainty invites parties to litigate every case instead of negotiating with reason. The duck test invites an inefficient use of social resources and brings the legal profession’s ability to reason like scientists into question.

Here is a short summary of the Federal Circuit cases determined to be patent eligible in the computer science domain. If your specification and claims quack like these, you have a decent chance of winning in this post-Alice world. But there is no guarantee that any of these cases will remain good law when the SC inserts itself back into the analysis. These ducks are patent eligible today.

    1. Ancor v. HTC, 908 F.3d 1343 (2018): The claimed advance is a concrete assignment of specified functions among a computer’s components to improve computer security. The claimed improvement in the computer functionality of security is eligible for patenting. The claim recites, using an agent to set up a verification structure in the erasable, non-volatile memory of the BIOS, the verification structure accommodating data that includes at least one license record.
    2. Data Engine v. Google, 906 F.3d 999 (2018), 906 F.3d 999 (2018): Thus, instead of finding information by scrolling different parts of a large spreadsheet, or by invoking multiple windows of a conventional three-dimensional spreadsheet, the present invention allows the user to simply and conveniently ‘flip through’ several pages of the notebook to rapidly locate information of interest. This improved interface allows for rapidly accessing and processing information on the different pages, including, for example, displaying a plurality of page identifiers for selecting individual pages. This is based upon a technical improvement that also happens to improve the user experience locating information more rapidly with less work.
    3. Core Wireless v. LG, 880 F.3d 1356 (2018): The disclosed invention improves the efficiency of using the electronic device by bringing together a limited list of common functions and commonly accessed stored data, which can be accessed directly from the main menu. Displaying selected data or functions of interest in the summary window allows the user to see the most relevant data or functions without actually opening the application up.
    4. Finjan v. Blue Coat, 879 F.3d 1299 (2017):Claims directed to a behavior-based virus scanning method directed to patent-eligible subject matter because they employ a new kind of file that enables a computer security system to do things it could not do before, including accumulating and utilizing newly available, behavior-based information about potential threats. Enabled more nuanced virus filtering in analyzing whether a downloadable’s code . . . performs potentially dangerous or unwanted operations. Directed to a non-abstract improvement in functionality, rather than the abstract idea of computer security.
    5. Visual Memory v. Nvidia, 867 F.3d 1253 (2017): Claims directed to an improved computer memory system with programmable operational characteristics defined by the processor directed to patent-eligible subject matter. The claimed invention provided flexibility that prior art processors did not possess, and obviated the need to design a separate memory system for each type of processor.
    6. Thales Visionix v. US, 850 F.3d 1343 (2017): Claims reciting an improved method of utilizing inertial sensors to determine position and orientation of an object on a moving platform not directed to an abstract idea or law of nature. Even though the system used conventional sensors and a mathematical equation, the claims specified a particular configuration of the sensors and a particular method of utilizing the raw data that eliminated many of the complications inherent in conventional methods.
    7. Trading Technologies v. CQG, 675 Fed. Appx. 1001 (2017): Directed to improvements in existing graphical user interface devices that have no pre-electronic trading analog. Recites more than setting, displaying, and selecting data or information that is visible on the graphical user interface device. Specific technologic modifications that solve a problem or improve the functioning of a known system generally produce patent-eligible subject matter.
    8. Amdocs v. Openet, 841 F.3d 1288 (2016): Components are arrayed in a distributed architecture that minimizes the impact on network and system resources. Minimizes network impact by collecting and processing data close to its source. Distributed data gathering, filtering, and enhancements enabled load distribution. Allows data to reside close to the information sources, thereby reducing congestion amount of data moving causing network bottlenecks. Yet data still accessible from a central location. The specification explains how the technical arrangement provides an advantage over prior art systems that required massive record flows from the network devices and which required a huge centralized database.
    9. McRo v. Bandai, 837 F.3d 1299 (2016): Claimed processes using combined order of specific rules improved an existing technological face animation processes. Defendants provided no evidence that the prior art process used by animators used the same rules required by the claims.
    10. Bascom Global v. AT&T Mobility, 827 F.3d 1341 (2016): Technical feature of network filtering system associates individual accounts with their own filtering scheme while locating the filtering system on an ISP server. This specific applications or improvements to technologies of filtering Internet content is not conventional or generic. The claims carve out a specific location for the filtering system (a remote ISP server) and require the filtering system to give users the ability to customize filtering for their individual network accounts.
    11. Enfish v. Microsoft, 822 F.3d 1327 (2016): Claims reciting a self-referential table for a computer database eligible under step one because the claims were directed to a particular improvement in the computer’s functionality. The self-referential table enables faster searching and more effective storage of data than previous methods. An improvement to the capability of the system as a whole.
    12. DDR Holdings v., 773 F.3d 1245 (2014): Claims are necessarily rooted in computer technology that overcomes a problem specifically arising in the realm of computer networks. DDR’s patent claimed a technical solution to a problem unique to the Internet—websites instantly losing views upon the click of a link, which would send the viewer across cyberspace to another company’s website. A hybrid webpage that combined visual elements of the first website with the desired content from the second website was a specific technical solution that solved the problem of losing views to another company’s website.

How to Make Your Patent Quack Like A Duck

So how do you get your specification and claims to look like a duck and quack like a duck?

In a moment, I am going to discuss the new 2019 Guidance issued by the USPTO. However, even if you can get the USPTO to issue your claims by following the 2019 Guidance, there is no guarantee your patent will survive litigation. You see, the 2019 Guidance, like the previous guidance, will only be persuasive to the Federal Circuit. The Federal Circuit gets to determine whether or not the 2019 Guidance is consistent with Alice. Once the Federal Circuit decides, the parties may appeal to the SC. If the SC decides to hear the appeal, then we will find out if the SC agrees with the Federal Circuit.

Until then, I suggest you make write your patents to follow the above duck cases. So here are my suggestions for getting your specification and claims to quack like the above ducks.

  1. Duck Specifications: In many of the duck cases, the court looks to the specification for a technical description of how the technical arrangement is a technical improvement over the prior art arrangements. If you are familiar with European law, this should sound faintly familiar. In the written decisions for the Duck cases, the judges tend to find and summarize the advantages that the new arrangement provides over the prior art ways of doing things. They often quote from the specification when they describe the technical advantages. Historically, many US patent lawyers have stayed away from describing technical advantages. They feared the claims would be limited to exclude infringement if the accused embodiments did not provide the described technical advantages. Lawyers in the US tended to merely describe the technical arrangement of the invention and remain silent with respect to advantages. That doesn’t seem to be enough today. The courts need more information about why and how a new technical arrangement (not shown in the prior art) is able to improve the computer system functioning. The more concrete the description of the technical advantage (speed, reduced cycles, reduced latency, reduced bandwidth, reduced memory requirements, quicker/better user experience, etc.) the easier it is for the court to justify the nonabstract nature of the improvement. A discussion of advantages to the user are often given secondary weight to the technical efficiencies to the computer as a consequence of the technical improvement.  The way the judges analyze the cases in this area of law makes sense. In essence, they are answering the question, “How can this thing be abstract when it is providing real-world advantages to computer science, the user, and/or related technologies?” That is a test that the judge-engineer-scientists on the Federal Circuit understand.
  2. Duck Claims: The claims need to contain the technical elements arranged in a way that provides the technical advantage discussed in the Duck Specification. If the claims do not clearly call out the arrangement that provides the technical advantage described in the specification, they might not be duck claims even if the specification quacks properly. So far, the courts have not seemed to require adding the expected technical advantage to the claim language. As far as I know, in the post-Alice world, we haven’t seen many cases where the court imports an unclaimed technical advantage from the specification into the claims. If you know of one, please comment below, and I’ll give you credit in the update to this post. Thank you in advance.

Nobody really knows what the SC will do the next time they hear a patent subject matter eligibility case. So duck claims and duck specifications are no guarantee either. But I have no other ideas for you. I would suggest that you simply comply with the Alice test. However, if I knew what the Alice test meant in practice, I would already have explained that to you. But the truth is, I don’t know.  Which is not good.  I have a summa cum laude BS in computer science and I have very few ideas about how to apply Alice in my computer science practice. I feel incompetent every time I look at this issue. So I just follow the duck test set by the Federal Circuit.

SC is the highest court in the land. Thus, the Alice case is controlling law. Whether or not duck cases are properly interpreting Alice, is yet to been seen. If the SC continues to use abstract reasoning (did you get my joke?) when applying subject matter eligibility law, then Congress will need to step in and amend 35 USC §101.

I am going to continue to write duck specifications and duck claims whenever I can get that information from my clients. I believe that will have a longer shelf-life than the new 2019 Guidance. Don’t get me wrong, I like the 2019 Guidance. I just hope the courts agree. When I am arguing a case before the USPTO, I will follow the 2019 Guidance. However, I will also prepare my specification and claims to comply with the Federal Circuit’s duck cases.

Main Ideas of the 2019 Guidance

Okay, with that context in mind, I will now summarize the 2019 Guidance.

The United States Patent Office (USPT0) has issued the 2019 Revised Patent Subject Matter Eligibility Guidance. However, both the USPTO agency and the Federal Circuit are required to follow Alice. If the SC later interprets the 2019 Guidance as broader or narrower than Alice, the SC can reject this 2019 Guidance.

If you are a patent lawyer or patent engineer, you need to be intimately familiar with the 2019 Guidance. I am only going to cover them superficially here. I presume that you will study them completely when drafting and prosecuting patent applications.

Revised Step 2A–(“directed to a judicial exception?”)

Step 2A is a two-pronged inquiry.

Prong One of 2A (P1-2A): Prong one requires determining whether a claim recites a judicial exception.

The guidelines limit examiners to “subject matter groupings” when determining whether a claim “recites a judicial exception.” The subject matter groupings have been limited to “mathematical relationships,” “methods of organizing human activity,” and “concepts [that could be?] performed in the human mind.”

When determining whether a claim recites a judicial exception of the abstract idea kind, the guidelines limit examiners to only the above subject matter groupings. If the claim does not recite one of these limited groupings, then it is patent eligible.

If the examiner determines that a claim recites one of the limited groupings, they proceed to prong 2 of 2A analysis.

If prong two analysis is required, the examiner must first make findings of which claim elements specifically are judicial exceptions and which judicial exception the identified claim elements fall under. With findings enumerated, the examiner analysis continues at prong 2 of 2A.

Prong Two of 2A (P2-2A): The examiner must determine whether the claim recites additional elements that integrate the judicial exception claim elements into a practical application. P2-2A adds a more detailed analysis of the eligibility analysis than required in the previous guidelines.

In making this practical application determination, examiners are no longer allowed to determine at this stage whether any other such limitation is well-understood, routine, or conventional activities. Examiners must determine whether other limitations help integrate the identified limitation into a practical application–even if those other limitations are conventional, well-understood, or routine.

The guidelines provide the following examples of when one of the other limitations of the claim (for claims in the computer science domain) integrate the identified judicial exception into a practical application.

  1. The additional element(s) reflects an improvement in the functioning of a computer or an improvement to another technology or technical field.
  2. The additional element(s) uses a judicial exception in conjunction with a particular machine or manufacture integral to the claim.
  3. The additional element(s) transforms a particular article to a different state or thing.
  4. The additional element(s) uses the judicial exception in a meaningful way beyond merely linking it to a particular technological environment.

Examiners are reminded (multiple times) in the guidance that a claim that includes other limitations that are conventional, well-understood, or routine, may still integrate a judicial exception into a practical application during P2-2A.

A claim that does not integrate a judicial exception into a practical application may still be subject matter eligible under following Step 2B.

Step 2B: Claims may still be patent subject matter eligible if the additional elements recited in the claim provide significantly more than the judicial exception. Under step 2B, examiners should determine whether the additional elements, individually or in combination, amount to an inventive concept (i.e., “significantly more than the judicial exception itself”). In this step, examiners are allowed to consider whether any of the additional limitations are conventional, well-understood, or routine.


I recommend following the duck test when drafting your patent applications. That law is the current and controlling law set by the Federal Circuit. In your specifications, include a technical description of how the technical arrangement is a technical improvement over the prior art arrangements. In your claims, call out the arrangement that provides the technical advantage described in the specification. Because this is the format that the Federal Circuit seems to prefer, it is likely to remain the format that survives a subject matter eligibility challenge in litigation.

I also suspect, that claiming the arrangement that provides the technical advantage described in the specification, will result in claims with “other limitations” that survive the revised 2A analysis under the 2019 Guidance. Following this path, your specification and claims are more likely to survive both prosecution and litigation.

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