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USPTO's Subject Matter Eligibility: An Update

On July 30, 2015, the United States Patent and Trademark Office (USPTO) has issued additional guidelines in determining Subject Matter Eligibility under 35 U.S.C. § 101. These guidelines respond to the public comments provided in response to the Interim Patent Eligibility Guidance released by the USPTO in December 2014. The various themes of the comments include requests for additional examples of claims directed to abstract ideas and laws of nature; explanation of the markedly different characteristics (MDC) analysis; and clarification of the requirements of a prima facie case of unpatentability under § 101 and the role of evidence in subject matter rejections. The July Update focuses mainly on the evaluation of abstract ideas provides additional examples of eligible and ineligible claims.

Unfortunately, the July 2015 Update did not fully address the public's concerns regarding the requirements for examiners to make the prima facie case of subject matter ineligibility, the role of evidence in eligibility rejections or applicant responses, or the role of preemption. In addition, while the new claim examples are helpful, there are a number of problems with the USPTO's explanation of these examples.

Our panelists will review the July Update and address the various issues discussed in the July Update, the new claim examples, as well as strategies for overcoming Section 101 rejections.​​