Earlier today at the Unleashing American Innovation Symposium hosted by the National Institute of Standards and Technology, USPTO Director Andrei Iancu informed the audience in attendance that the United States Patent and Trademark Office would later in the day publish fresh guidance relating to patent eligible subject matter under 35 U.S.C. 101. It was just last week during the question and answer period after Iancu’s first major policy speech at the U.S. Chamber of Commerce, in response to a question from former Commissioner for Patents Bob Stoll, that Iancu promised new guidance within several weeks.
As is typical when a Federal Register Notice is signed, an advance copy — referred to as an unpublished version of the Notice — is made available the day before official publication in the Federal Register. The Federal Register Notice signed by Director Iancu on April 18, 2018, which relates to the Federal Circuit’s recent decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), will officially publish on Friday, April 20, 2018.
“The USPTO has issued today a Federal Register notice and memorandum to the patent examining corps in response to a recent decision by the U.S. Court of Appeals for the Federal Circuit in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), pertaining to subject matter eligibility,” explained Paul Fucito, a spokesman for the United States Patent and Trademark Office in the Office of Communications. “This new guidance pertains to the second step of the Alice-Mayo framework for determining subject matter eligibility, and is focused on how examiners are to analyze and document a conclusion that a claim clement is ‘well-understood, routine, conventional’ during the patent examination process.”
Berkheimer is obviously an important and helpful decision from the patentee’s perspective. The Federal Register Notice appears to also be quite helpful as well.
“[A]n examiner should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry,” the Notice reads. “A finding that an element is well-understood, routine, or conventional cannot be based only on the fact that the specification is silent with respect to describing such element.”
The Notice is significant because, in a 101 rejection, an examiner cannot simply assume that elements or a combination of elements are “well understood, routine or conventional.” Examiners will be required to either cite to an admission by the applicant in the specification, or something said during prosecution, court cases holding elements conventional, or a written publication establishing, that the element or elements are well understood, routine or conventional. The Notice explains that “official notice” is to be used very sparingly.
“The USPTO is requesting public comment on the new guidance,” Fucito explained. “The USPTO is determined to continue its mission to provide clear and predictable patent rights in accordance with this rapidly evolving area of the law, and to that end, may issue further guidance in the future.”
The deadline for receiving public comments will be 120 days from official publication in the Federal Register, which will take place on Friday, April 20, 2018.