USPTO Patent Eligibility Guidelines Update
Recently, the United States Patent and Trademark Office, USPTO, released a “May 2016 Subject Matter Eligibility Update” (“Update”) that is aimed at providing guidance to patent examiners on formulating a subject matter eligibility rejection. This update is further aimed at evaluating an applicant’s response to subject matter eligibility rejection that is generally included in the patent office action issued by the patent office examiners.
By way of said guidelines, the US Patent Office has published life science patent examples, which can assist examiners and applicants evaluate whether claimed discoveries satisfy 35 U.S.C. § 101 in view of recent decisions by the U.S. Supreme Court and the Federal Circuit. Among such examples, crucial insights can be obtained with regards to diagnostic methods patents relating to personalized medicine.
Specifically, the patent eligibility guidelines and corresponding examples relate to the USPTO’s two-part analysis described in the USPTO’s Interim Eligibility Guidance, wherein if a claim is decided to be directed to an abstract idea, a law of nature, or a natural phenomenon, then the claim must be evaluated to determine if the claim elements taken individually and in combination, amount to something significantly more than the exception itself.
In light of above guidelines, instead of issuing generic objections in the patent office actions, the patent examiners would be required to be specific while issuing such patent eligibility objections as the update states:
“If the original rejection did not identify a Supreme Court or Federal Circuit decision in which a similar abstract idea was found and applicant challenges identification of the abstract idea, the examiner would need to point to a case in which a similar abstract idea was identified and explain why the abstract idea recited in the claim corresponds to the abstract idea identified in the case to maintain the rejection.”
It is worthwhile to note that in accordance with said update for patent eligibility, the Patent Examiners are advised not to rely on USPTO examples that do not carry the weight of court precedent.
Therefore, patent applicants are bound to get certain benefits hereon while filing patents in US because hereon, the USPTO office actions will probably not include the USPTO’s examples that not carry the weight of legal authority. However, the patent applicants are warned that an argument stating that the claim “does not preempt all applications of the exception” will not in itself save the claim because “preemption is not a standalone test for eligibility”, as stated by the USPTO.
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