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Good, Bad & Uncertainty of New Patent Guidelines

December 16, 2014

​Fenwick & West patent partner Robert Sachs was quoted extensively in a Scrip Intelligence article discussing new guidance for judging patent claim eligibility released by the U.S. Patent and Trade Office on December 15, 2014.

Sachs characterized as "very interesting" the PTO's 2014 Interim Guidance on Patent Subject Matter Eligibility, which revises previous PTO guidance in the wake of U.S. Supreme Court rulings in Myriad and Mayo.

Sachs praised the guidance for noting that the Supreme Court had not laid out a per se rule excluding software or business methods from patent protection eligibility and for not imposing special requirements. He had a more mixed opinion of the PTO's stance that patent rule excluding software or business methods from patent protection eligibility and for not imposing special requirements. He had a more mixed opinion of the PTO's stance that patent examiners must consider claims as a whole, however.

"This is helpful to the extent that you can point to the specification and get the examiner to appreciate that the inventor is not seeking to patent an abstract idea, but a specific system or process," Sachs told Scrip.

At the same time, Sachs found several aspects of the PTO memorandum to be problematic.

For one thing, he said, there is "considerable uncertainty" about the way in which the guidance will be followed, "because the USPTO fails to acknowledge that the [Myriad and Mayo] court decisions are inconsistent."

Sachs was also critical of the PTO's effort to apply the Mayo test to other federal court rulings on patent claim eligibility.

"While creative, this is not helpful, since it often bears no relation to how the courts in fact decided those cases," he said.

In addition, some of the PTO's case summaries of other patent eligibility case law are "plain wrong," Sachs continued, adding that "there are lots of snippets of language" in the summaries "that can be used by examiners very expansively, since they are taken out of context."

Sachs also expressed disappointment with the PTO for ignoring the significance of preemption, "even though this is the key motivation for the 101 exceptions, as expressly stated by the Supreme Court."

One other problem with the guidance, Sachs indicated, is that it doesn't set conditions for deciding whether a claim limitation is routine or whether something is an abstract idea.

"Examiners can continue to simply make an unsupported assertion, and put the burden on the applicant to demonstrate why the assertion is incorrect," he said.