USPTO issues interim guidance on subject matter eligibility

It has been more than a year since the Supreme Court rendered its decision in Alice Corp. v. CLS Bank International.  Since that decision, the USPTO has struggled with the implementation of the decision and, as a result, many examiners have been afraid or unwilling to allow certain types of patent applications – especially those examiners assigned to the business methods art unit.

On July 30, the USPTO issued new interim guidance on subject matter eligibility.  A link to these guidelines is provided below.

While we continue to digest this newly released information, our initial reaction to this new guidance is positive.  The guidance includes specific software examples of claims that are patent eligible and claims that are not patent eligible.  The examples are meant to provide a framework for patent examiners and attorneys to discuss pending applications and whether or not the claims being examined are patent eligible.  In addition, the new guidance includes useful examples of patent eligible Graphical User Interface (GUI) claims, Basic Input/Output Systems (BIOS) claims, and transmission of stock quote data claims.  We are hopeful that this guidance will help some of those previously reluctant examiners find a way to allow more applications.

There is also a small window of opportunity to provide feedback to the USPTO on this guidance.  If you have any thoughts, questions, or concerns that you would like to have voiced to the USPTO, please let us know.

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