The USPTO rang in the new year by releasing new Examiner Guidance that could potentially benefit patent applicants who have previously encountered difficulty acquiring patents under the Office’s procedures for determining patent subject matter eligibility under 35 U.S.C. § 101. Supreme Court decisions regarding § 101 from 2012 to 2014 have made patents related to software and certain biotechnology related subject matter more difficult to obtain. As detailed below, the new guidance seems to indicate a major shift in how the USPTO will examine patent applications under § 101. This shift appears to swing the pendulum back toward patent holders by allowing many more applications to meet the patentability requirements of § 101.
Specifically, the guidance sets forth two major changes to examination procedures for determining whether a patent application is directed to a judicial exception to patent eligibility (laws of nature, natural phenomena, or an abstract idea). First, the guidance clarifies the concepts that may constitute an abstract idea by narrowing to only three groups the subject matter included in the abstract idea exception. Second, even if a patent claim is found to recite a judicial exception, the guidance explains that the claim is still patent-eligible if it integrates the judicial exception into a “practical application” of the judicial exception.
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Jonathan Bockman is the head of the firm’s East Coast patent prosecution group. His practice concentrates on domestic and international patent prosecution, portfolio management, IP due diligence, patent infringement and validity determinations, and IP litigation support. His clients range from some of the largest domestic and international companies to early stage start-ups.
Mr. Bockman has prepared and prosecuted patents in a wide variety of technology More ›
Dr. Sejin Ahn focuses her practice on patent prosecution and counseling in the areas of life sciences, biotechnology and pharmaceuticals. She has prior research experience in scientific disciplines including molecular biology, genetics, genomics, immunology and microbiology. She also has experience with patentability and patent landscape analyses.
Dr. Ahn has extensive experience drafting and prosecuting patent applications in the broad areas of life sciences, More ›
Shouvik Biswas is of counsel in the Patent Group of Morrison & Foerster’s Northern Virginia office.
Mr. Biswas’ practice is focused on patent preparation and prosecution in the United States and foreign jurisdictions, strategic IP counseling and portfolio management, and adversarial proceedings before the United States Patent and Trademark Office.
Mr. Biswas has handled matters in all stages of prosecution, including invention disclosures, new application drafting, More ›
Christopher E. Gloria
Christopher Gloria is an associate in the firm’s Patent Group. Mr. Gloria’s practice concentrates on domestic and international patent prosecution, IP due diligence, and IP litigation support including patent infringement and validity determinations.
Mr. Gloria has drafted and prosecuted patents in numerous technology areas including medical devices, user interfaces, autonomous devices, image analysis, machine learning, and consumer products.
Before attending law school, Mr. Gloria worked More ›
Karen G Potter
Karen focuses on patent preparation, prosecution, and strategic counseling for start–up, emerging, and established life sciences and biotechnology companies. She advises clients in the development and management of comprehensive patent portfolios that match their scientific and business objectives. Karen also helps identify and evaluate patentability, determine and secure protections worldwide, ensure freedom to operate, and perform due diligence review.
Building on her technical expertise in More ›