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Wednesday, 17 December 2014 11:59

USPTO Issues 2014 Examiner Guidelines on Patent Eligibility

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USPTO Subject Matter Eligibility Test for Products and Processes USPTO Subject Matter Eligibility Test for Products and Processes

The USPTO today issued an updated and comprehensive guideline regarding patent subject matter eligibility in view of the recent Supreme Court decisions in Alice Corp, Myriad, and Mayo. This "2014 Interim Guidance on Patent Subject Matter Eligibility" was published today, December 16, 2014.

In assessing whether an invention is now patentable subject matter under 35 U.S.C. 101, a patent exmainer is to follow a three-step process:

1. Is the claim directed to one of four statutory categories, i.e. a process, machine, manufacture, or composition of matter?; if yes,

2. Is the claim then directed to one of the judicially recognized exceptions to eligible subject matter, i.e. to a law of nature, a natural phenomenon, or an abstract idea?; if yes,

a. For a nature-based product, determine if it has characteristics (structure, function, or other properties) "markedly different" from natural product

3. Does the claim recite additional elements that amount to significantly more than the judicial exception?

According to the notice, a claim is "directed to" a judicial exception when a law of nature, a natural phonemenon, or an abstract idea "is recited (i.e., set forth or described) in the claim." Claims that recite a judicial exception may still be patent eligible if they are "directed to inventions that clearly do not seek to tie up the judicial exception".

Included in the notice are extensive examples that show what subject matter has been found eligible vs. ineligible. The guidance is effective as of December 16, 2014, and applies to all applications filed before, on, or after this date.

For the full Federal Register notice on the patent eligibility guidelines, visit http://www.gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf.

Read 1248 times Last modified on Wednesday, 28 September 2016 12:03
Tony Guo

As a specialized technology counsel, Tony supports his clients in the high tech, creative, and online industries. His primary areas of practice include intellectual property protection, Internet law, and startups. Tony is a USPTO registered patent attorney, as well as a licensed lawyer in California and Florida. He comes from a background involving considerable hardware and software development experience, having worked in both development and IT roles in the tech and finance industries.

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