How does the USPTO determine if a claim falls within a statutory category?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. The USPTO determines if a claim falls within a statutory category through Step 1 of the eligibility analysis. As described in MPEP § 2106 , Step 1 asks: Is the claim to a process, machine, manufacture or composition of matter? The MPEP provides guidance on this process: The claim should be evaluated using its broadest reasonable interpretation (BRI). The examiner should determine whether the claim as a whole falls within one or more statutory categories. If the claim falls within one or more categories (Step 1: YES), it proceeds to further analysis for eligibility. If the claim does not fall within any statutory category (Step 1: NO), it is non-statutory and should be rejected under 35 U.S.C. 101. Importantly, “ A claim whose BRI covers both statutory and non-statutory embodiments embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter. Such claims fail the first step (Step 1: NO) and should be rejected under 35 U.S.C. 101, for at least this reason. “ Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Step 1: Claim Must Be to a Process, Machine, Manufacture or Composition of Matter MPEP 2106.03 Claim Covering Both Statutory and Non-Statutory Embodiments Not Eligible for Patent Protection MPEP 2106.03 Recommended Broadest Reasonable Interpretation for Patent Eligibility MPEP 2106 Claim Must Fall Within Statutory Categories for Eligibility MPEP 2106.03 Required Broadest Reasonable Interpretation Required for Patent Eligibility MPEP 2106 Claim Must Fall Within Statutory Categories MPEP 2106.03 Required Requirement for Claim to Fall Within Statutory Categories MPEP 2106 Broadest Reasonable Interpretat...