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Jonathan Hines of Erise IP reviews three major changes from the USPTO’s new guidance on subject matter eligibility and provides practitioners with relevant tips for each one.
New 2019 Revised Patent Subject Matter Eligibility Guidance was issued by the US Patent and Trademark Office (USPTO) on January 4, 2019. The revised guidance presents a substantial shift in the analysis of claims for subject matter eligibility under 35 USC §101. As such, a practitioner drafting a patent application or responding to an office action on a pending application will need to adapt drafting techniques and arguments to fit the new guidance.
Discussed herein are three major changes in the subject matter eligibility analysis, along with proposed practice tips.
The three major issues are changes in identification, categorisation, and application of abstract ideas. First, alleged abstract ideas must be recited as such in the claims. No longer can abstract ideas be created by examiners through summarising or generalising the claims.
Erise IP, US, USPTO, subject matter eligibility, patent application, abstract ideas, claim limitations, Alice/Mayo framework, Supreme Court