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20 April 2018Patents

USPTO proposes new guidance on Mayo-Alice framework

The US Patent and Trademark Office ( USPTO) has proposed new guidance on the second step of the Mayo-Alice framework, which is focused on subject matter eligibility.

Yesterday, April 19, the office issued a memorandum on how patent examiners are to conclude whether a claim’s additional element is “well-understood, routine and conventional”.

The memorandum has been issued following a recent decision by the US Court of Appeals for the Federal Circuit in Berkheimer v HP Inc regarding subject matter eligibility.

Step two of Mayo-Alice refers to the element of each claim both individually and as an ordered combination and “whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact”.

Examiners could previously only conclude an element—or combination of elements—is well-understood when the examiner can conclude that the elements are widely prevalent or in common use in the relevant industry.

According to the memorandum, such a conclusion must now be based upon a factual determination.

In the second step of the analysis, an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, for example: “A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).”

It also said that a finding cannot be based “only on the fact that the specification is silent with respect to describing such element”.

Publications that demonstrate the additional element is well-known by the industry are also accepted as supporting evidence.

“An appropriate publication could include a book, manual, review article, or other source that describes the state of the art and discusses what is well-known and in common use in the relevant industry.”

Furthermore, the memorandum said that the analysis of whether an element is widely prevalent or in common use is the same as the analysis under 35 USC § 112(a), which says the specification shall contain a written description of the invention and how it is used.

The USPTO is seeking public comment on the memorandum.

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