Patents - May 13, 2019

Approaching 35 USC 101 from the other side

by Alessandro Steinfl and Brian J. Cash

On January 7, 2019, the USPTO introduced a 2019 Revised Patent Subject Matter Eligibility Guidance in the Federal Register.

There have been a number of resources put out by the USPTO in helping practitioners understand the changes, but we thought it would be useful to offer some advice of our own along with a flowchart from the practitioner’s point of view, particularly the point of view of a practitioner who has received a rejection from an examiner.

The first step is, of course, a consideration of a step 1 rejection: that is, the examiner is rejecting the claims not on an Alice-based factor, but on a traditional “is the claim in a statutory category” basis.

If the examiner includes rejections based on Alice (i.e. step 2A and step 2B), then you have a few questions to answer. For the first half of 2A, you have to see if the claim recites anything that can be a judicial exception falls in one of the appropriate categories.The next step would be to address if the claim is integrating the abstract idea into a practical application.

Then there are the 2B (“something significantly more”) arguments to make, though there are several post-Alice guidance changes to keep in mind.

For a breakdown of those changes and a primer on how to approach them successfully, read the full article on Law360 by Steinfl+Bruno partner Alessandro Steinfl and patent attorney Brian J. Cash.