USPTO Issues Interim Guidance on Patent Subject Matter Eligibility

On December 16, 2014, the United States Patent and Trademark Office published its Interim Guidance on Patent Subject Matter Eligibility in the Federal Register. (Get copy here.) This guidance offers more advice to Examiners in evaluating whether a claimed invention qualifies as “eligible subject matter” under 35 USC 101. The guidance incorporates the most recent U.S. Supreme Court case of “Alice” (Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)). The guidance further summarizes U.S. District Court and Federal Circuit decisions concerning 35 USC 101, including those applying the Alice. The interim guidelines took affect on December 16, 2014 and includes a request for public comment.

The Alice decision hits business method and software patents particularly hard. A string of recent District Court and Federal Circuit decisions have struck down such patents, holding that the patent claims were ineligible for patenting under the Alice decision. The reasoning used by the courts more often than not has baffled technologists and practitioners, including yours truly. Although the interim guidelines offer more specific advice than the June 2014 Preliminary Instructions, it’s clear from the reading of the guidelines and conversation with patent examiners that the USPTO is still taking a very strict view of “Alice”. The onus remains on the applicants and patent practitioners to demonstrate eligibility. Do we dare hope that Congress will step in and fix the “101 mess” created by the courts?

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