USPTO Updates Subject Matter Eligibility Guidance Materials

On May 4, 2016, the USPTO issued guidance materials for patent examiners to assess patent subject matter eligibility.  The guidance materials focus on (i) how examiners should formulate a subject matter eligibility rejection and (ii) how examiners should evaluate an applicant’s response to a rejection.

When formulating a subject matter rejection, examiners must identify the ineligible subject matter, e.g. an “abstract idea”, law of nature or a natural phenomenon, as it is recited in the claims and explain why it corresponds to an ineligible concept.  Then, the examiner should identify the additional elements of the claims and why these elements, either alone or in combination, do not add to the claim to make it patentable.  For example, an examiner may conclude that certain claim elements are well understood, routine, or conventional activities, and should explain why the courts have recognized, or a skilled person in the field would recognize, the additional elements to be well-understood, routine, conventional activities.

The USPTO’s Memorandum providing examination instructions to the Patent Examining Corps relating to subject matter eligibility of claims is available here.

Specific examples have also been issued by the USPTO to assist the examiner in formulating subject matter rejection, and evaluating an applicant’s responses to rejections.  These examples include:

• Examples of how to apply USPTO guidance to life sciences subject matter eligibility problems shown here;
• An index of eligibility examples available here; and
• A list of exemplary subject matter eligibility court decisions shown here.