New USPTO Patent-Eligibility Guidance Not So New

The USPTO’s “Subject Matter Eligibility” page has received updates as of May 4, 2016.  These updates include examples that will be of great interest to life sciences practitioners.  The rest of us will find little news.  The Office has provided a memorandum for its patent examiners on “Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection.”  However, this memorandum simply lays out the by now well-known two-part Alice/Mayo test, spells out explanations that examiners are supposed to give when making Section 101 rejections, and provides examiners with responses to arguments that applicants may make.  Applicants may find this guidance useful in pressing examiners for better explanation of rejections based on allegedly unpatentable subject matter.  However, I suspect applicants will continue to be frustrated by the seemingly subjective, and undeniably unpredictable, nature of many rejections under 35 U.S.C. § 101.

Upcoming Webinar

Business Methods and Patent-Eligibility at the USPTO
September 22, 2017 at 12:00 pm EDT
During the webinar, Charles Bieneman will discuss recent trends and current practices with respect to patent-eligibility at the USPTO’s business methods arts units – including a looks at how some cases are surviving Section 101 rejections. Register

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