The USPTO’s latest Guidance on subject matter eligibility takes some positive steps toward stabilizing the examination rules in the context of complex and dynamic case law. The USPTO is accepting comments about the Guidance until March 16, 2015, and plans to release additional examples and refinements. Pierce Atwood will keep you informed of these developments. Please contact us if you would like to discuss submitting comments to the USPTO.
On December 16, the USPTO published its long-awaited 2014 Interim Guidance on Patent Subject Matter Eligibility (79 Fed. Reg. 74618-74633). The Guidance’s primary purpose is to provide a framework for examiners to examine patent applications for subject matter eligibility under 35 U.S.C. § 101 in view of recent decisions by the Supreme Court and the Court of Appeals for the Federal Circuit. The Guidance applies, to all categories of patentable subject matter, the general two-part test that the Supreme Court set forth in Mayo v. Prometheus: (1) Is the claim “directed to [a judicial exception]?”; and (2) If so, does the claim recite “additional elements that amount to significantly more than the judicial exception?”
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