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The United States Patent and Trademark Office (USPTO) has updated the Manual of Patent Examining Procedure (MPEP) in light of the Appeals Review Panel (ARP) decision in Ex Parte Desjardins. This revision clarifies how examiners evaluate Subject Matter Eligibility under 35 U.S.C. § 101 for claims reciting technological improvements, particularly in computer functionality and applied technologies. The main takeaway: Examiners must now actively look at the technical improvement your invention offers, judging the patent application as a whole against the Alice/Mayo framework.
Legal Basis
The USPTO's new policy is an advanced notice of change to the MPEP, specifically updating § 2106 and related sections. This rule change comes directly from a key Patent Trial and Appeal Board decision called Ex Parte Desjardins (Appeal No. 2024-000567), which focused on how software that improves a computer's function should be treated. This decision follows the standards set by the Federal Circuit in Enfish, LLC v. Microsoft Corp (822 F.3d 1327 (Fed. Cir. 2016)). The new rules are effective immediately and apply to all pending and new patent applications. The main goal is to create a more reliable way to evaluate software and technology claims.
What is the New Standard for Analyzing Patent Eligibility Under 35 U.S.C. § 101?
The updated guidance provides sharper focus for 35 U.S.C. § 101, which sets the basic requirements for patent eligibility. This involves refining the application of the two-step Alice/Mayo framework.
| Element | Old Approach | New MPEP Guidance |
| Step 2A, Prong Two | Evaluated if the claim was merely "directed to" an abstract idea. | Requires explicit consideration of asserted improvements to technology or a technical field during the abstract idea test. |
| Claim as a Whole | Standard consideration, but often missed the bigger picture. | Reaffirms that the examiner must look at the entire invention—including all technical benefits—to see if the abstract idea is integrated into a practical application. |
Which Technologies are Impacted by the USPTO's MPEP Update?
This updated rule affects patent applicants filing in technology areas that are commonly challenged under § 101. The changes are most helpful for those working on:
- Software Functionality: Inventions that make a computer or system work better, faster, or more efficiently (e.g., better memory management or faster processing).
- Data Systems & AI: Claims covering new ways to structure data, learning models, or specialized processing used by Artificial Intelligence (AI) and Machine Learning (ML) firms.
- Applied Technology: Any invention that uses an abstract idea (like a math formula) to genuinely improve a physical device or technical process.
The new rules require examiners to acknowledge and account for a genuine technological improvement, likely making it easier for inventors to argue that their claim is eligible for patent protection.
Potentially Broadened Acceptable Improvements
The guidance requires examiners to evaluate if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement in the functioning of a computer, or an improvement to other technology or a technical field.
Importantly, the new guidance is clear that technological improvements to other technologies or other technical fields and not just improvements to the functioning of a computer should be considered.
Then, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement, i.e., that the claim includes the components or steps of the invention that provide the improvement described in the specification. The claim itself does not need to explicitly recite the improvement.
Strategic Practices for Subject Matter Eligibility under New USPTO Guidance
The core challenge for applicants under the updated guidance remains demonstrating a clear technological improvement to the examiner. Failure to do so could result in a rejection under 35 U.S.C. § 101 and could significantly increase the cost and complexity of patent prosecution.
Alignment with Examiner Expectations
To improve the likelihood of a positive outcome and successfully navigate the Alice/Mayo framework under this new guidance, applicants may find it beneficial to adopt strategic methods that proactively align documentation with the revised examiner requirements:
- Emphasizing the Technical Advance: Patent applications could benefit from including specific descriptions of the functional problem solved and the technical mechanism used to solve it.
- Integrating Controlling Case Law: If a claim faces rejection, arguments in response could involve referencing the reasoning from decisions like Ex Parte Desjardins and Enfish, LLC v. Microsoft Corp. to assert that the claimed elements improve the technical functioning of the computer or related technology.
- Supporting with Rule 132 SMEDs: Applicants could utilize these voluntary declarations to provide supplementary evidence, such as comparative test results or expert analysis, that can confirm the real-world technological advancement described in the specification.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
