USPTO releases new examiner guidelines
The US Patent and Trademark Office (USPTO) has released a new set of guidance for patent examiners on subject matter eligibility.
In a notice published in the Federal Register on Thursday, May 5, the office outlined new guidelines for examiners when evaluating claims in view of the US Supreme Court’s decisions in Alice v CLS Bank, Association for Molecular Pathology v Myriad, and Mayo v Prometheus.
The latest guidance was prepared using comments from the public and other stakeholders. It includes a new set of life science examples and a memorandum to the patent examiners.
“We encourage members of the public to submit comments on issues related to subject matter eligibility. All related documents can be viewed on the subject matter eligibility page of the USPTO website,” the office said.
The latest guidance includes new life science examples, which use hypothetical fact scenarios to illustrate analyses for subject matter eligibility.
An examiner memorandum is also included that seeks to improve the quality and consistency of determinations and rejections of subject matter eligibility.
The memorandum explains that a reasoned rationale must be provided in an office action, and provides guidance on how to effectively communicate that rationale.
It also reinforces that examiners must carefully consider all arguments and evidence that disputes subject matter eligibility, and requires either withdrawing the rejection when the response is persuasive, or providing a rebuttal when the rejection is maintained.
The comment period is open indefinitely and feedback can be sent via email.
