vidal_kathi_sv_color_cropped-2-
26 July 2022PatentsStaff writer

USPTO to revisit patent eligibility guidance

Kathi Vidal makes key announcement | More public comment welcomed after admission that “more work needs to be done” to provide clarity

The US Patent and Trademark Office has decided to revisit its patent subject matter eligibility guidance and called for more public comments on the issue.

Yesterday, July 25, USPTO director Kathi Vidal made the announcement in a  blog post, stating that despite the progress that’s been made to achieve a more consistent examination under section 101, “there is more work to be done”.

The office has previously provided updates to its guidance on the patent examination process, including through the “2019 Revised Patent Subject Matter Eligibility Guidance”, the “October 2019 Patent Eligibility Guidance Update”, and the “Berkheimer Memo”, which is now integrated into the “Manual of Patent Examining Procedure” (MPEP).

The current guidance forms part of the MPEP section 2016, which sets out how patent examiners should evaluate claims for patent eligibility. The guidance has led to a “remarkable drop” in the office-wide eligibility rejection rate from about 25% in 2018 to about 8% today, said Vidal.

Additionally, at the urging of Senator Thom Tillis and Senator Tom Cotton in a March 2021 letter, the office launched the Deferred Subject Matter Eligibility Response (DSMER) pilot programme.

The DSMER programme is designed to “evaluate whether examination efficiency and patent quality can be improved by delaying the complete evaluation of subject matter eligibility until other patentability criteria are evaluated as opposed to addressing all requirements for patentability at the same time”, said Vital.

While the invitation period of the programme will expire on July 30, 2022, the programme will continue for approximately one to two years as each of the participating applications reaches final disposition.

In June this year, the USPTO released its report “ Patent eligible subject matter: Public views on the current jurisprudence in the United States".

Vidal said: “I explained that across the spectrum, stakeholders generally agreed that the law on patent eligibility—like other areas of patent law—needs to be clear, predictable, and consistently applied. This clarity and consistency will allow innovators to attract the investment and collaborations that bring more innovation to impact, in turn creating more jobs and solving world problems.”

The USPTO is now encouraging the public to send any thoughts or comments on the guidance specified in MPEP section 2106 to 101@uspto.gov by September 15, 2022.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk