Yesterday, the USPTO issued the most recent guidelines of patent subject matter eligibility pursuant to 35 U.S.C. 101, i.e. the detemrination of when an invention will be found ineligible for an “abstract idea”, “law of nature”, or “natural phenomenon”. This update follows the two preceding updates each from July 2015, and late 2014 (after the Alice decision). Specifically, the new memorandum issued by the Deputy Commissioner now requires that an examiner: (1) identify the judicial exception by referring what is recited in the claim and explain why it is considered an exception; (2) identify any additional elements (specifically point to claim features/limitations/steps) recited in the claim beyond the identified judicial exception; and (3) explain the reason(s) that the additional elements taken individually, and as a combination, do not result in the claim as a whole amounting to significantly more than the judicial exception. Overall, this appears to be an increased burden on the examiner in formulating an initial 101 rejection. Additional examples and recent court decisions have also been provided. For more, visit http://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0.
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