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The USPTO's New Eligibility Examination Guidelines: Navigating Patent Subject Matter Eligibility in Uncertain Times

August 4, 2015

By Ian McMillan and Paul Blizzard 

The United States Patent and Trademarks Office (USPTO) has released a new set of Eligibility Examination Guidelines to provide guidance to examiners on when to reject patent claims as ineligible abstract ideas. These guidelines give a sense of what computer-implemented subject matter the USPTO considers to be ineligible for patent protection.

Developing guidelines was difficult for the USPTO  as the courts have provided little explanation of when patent claims are invalid as ineligible abstract ideas, or what abstract idea means, and the USPTO lacks the authority to craft its own definitions. The USPTO is largely limited to telling examiners that patent claims cover abstract ideas if they cover subject matter that is similar to what the courts have determined to be abstract ideas. Given the absence of general concepts or principles for identifying the kinds of abstract ideas that are not eligible for patent protection, practitioners and applicants need to be aware of all of the Federal Circuit and Supreme Court case law on patent subject matter eligibility, and to craft patent claims with arguments in mind as to why the subject matter covered by the claims is materially different from subject matter determined to be ineligible in any of this case law.

The release of the new guidelines at least provides an updated set of subject matter examples, and also divides the case law into different categories of abstract ideas, which are useful both as a credible attempt to organize the case law, and to provide insight into the USPTO’s perspective on this case law and arguments they may find persuasive.

The guidelines can be found here.

 

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Author(s):

Ian McMillan Ian McMillan
B.Sc. (Math & Eng.), LL.B., LL.M.
Partner
905.817.6103  email Ian McMillan
Paul Blizzard Paul Blizzard
B.Sc. (Comp. Eng.), P. Eng., J.D.
Associate
416.957.1185  email Paul Blizzard