Home » Patents » USPTO – Patent Subject Matter Eligibility – May 2016 Update

USPTO – Patent Subject Matter Eligibility – May 2016 Update

Keltie LLP

K2 IP Limited

About IPcopy

IPcopy is an intellectual property related news site covering a wide variety of IP related news and issues. We will also take the odd lighthearted look at IP. Feel free to contact us via the details on the About Us page.

Disclaimer: Unless stated otherwise, the contributors to IPcopy (the "IPcopy writers") are patent and trade mark attorneys or patent and trade mark assistants at Keltie LLP or are network attorneys at K2 IP Limited. Guest contributors will be identified.

This news site is the personal site of the contributors and is not edited by the authors' employer in any way. From time to time however IPcopy may publish practice notes, legal updates and marketing news from Keltie LLP or K2 IP Limited. Any such posts will be clearly marked.

This news site is for information purposes only. Information posted to this news site is not legal advice and should not be taken as such. If you require IP related legal advice please contact your legal representative.

For the avoidance of doubt Keltie LLP and K2 IP Limited have no liability as to the content of IPcopy and any related tweets or social media posts.

USThe USPTO has recently issued an update to their training materials and guidance on subject matter eligibility. The new materials, which may be found here, contain a memo to US patent Examiners and some more examples in the life sciences area. There is an open ended comment period for the general public to make comments about patent subject matter eligibility topics (comments may be sent to 2014_interim_guidance@uspto.gov and will be uploaded for viewing onto the USPTO website).

The Federal notice that forms part of the May 2016 update notes that following the July 2015 update a total of 37 submissions were received from the public which have been carefully considered.  The USPTO has, in response, issued a memo to the Examiners titled “Formulating a Subject Matter Eligibility Rejection and Evaluation the Applicant’s Response to a Subject Matter Eligibility Rejection”.

The memo to the Examiners aims to improve the communications that Applicants receive from an Examiner when they’re raising a section 101 objection. According to the memo, when an Examiner regards a claim as being directed to an abstract idea, the rejection should identify the abstract idea as it is set out in the claim and should explain, with reference to court decisions, why the concept relates to an abstract idea. In a similar manner, life sciences rejections should identify a law of nature or natural phenomena as it is recited in the claim and provide a reasoned argument why the Examiner considers it to be caught by the ineligibility test.

Rejections should also identify any additional claim elements and explain why those taken in isolation or combination do not amount to significantly more than the exception identified in the first part of the eligibility test.

The memo notes that the examples that have been issued by the USPTO are not to be used as the basis of an eligibility rejection and reference should instead be made to court decisions. Guidance is also provided to the Examiners as to how to handle Applicant rebuttals to section 101 objections. Some examples are provided of appropriate Examiner responses in cases where the Examiner deems it appropriate to maintain the objection.

The new life sciences eligibility examples may be found here and contain examples relating to vaccines (to illustrate the application of markedly different characteristics and significantly more analysis on nature based products); diagnosing and treating Julitis (illustrating the significantly more analysis to diagnostic and treatment claims); dietary sweeteners (illustrating the application of markedly different characteristics and significantly more analysis on nature based products containing mixtures); screening for gene alterations (this example considers the actual claims of US5753441 plus some hypothetical claims); and a paper making machine (demonstrates the use of the streamlined analysis).

A table of all the examples released by the USPTO (now 33 examples in the set) has also been published along with some tables providing further information on selected eligibility cases from the Supreme Court and CAFC.

Mark Richardson 10 May 2016

 

 


Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: