Today, during the USPTO Patent Public Advisory Committee Quarterly Meeting, the USPTO announced that a new Subject Matter Eligibility Update is being published in the Federal Register on May 6. A pre-publication version is available in the Federal Register Reading Room today.
In the update, the USPTO stated that the examiners were issued a memorandum focusing on best practices in formulating a Section 101 subject matter eligibility rejection, though it does not provide elements necessary for a prima facie case. The USPTO also stated that the memorandum clarifies that eligibility rejections should be based on the two-part Mayo/Alice test. In the memorandum, examiners were told not to go beyond concepts similar to those identified as abstract ideas in case law and, when looking for “significantly more” than an abstract idea in the claims, that examiners should look at the elements individually and in combination. Further, the memorandum provides guidance on evaluation of a patent applicant’s response.
Additionally, the USPTO provided more subject matter eligibility life sciences examples, as well as an updated example index and court decisions appendix.
At first look, this appears to be a positive move by the USPTO to help examiners and applicants navigate the 101 minefield during examination. However, be prepared for continuing changes as cases proceed through the courts!