Michelle K. Holoubek discusses with Managing IP updated USPTO section 101 guidance regarding patent eligibility that petitioners say will be helpful in determining the boundaries of patentability. The guidance will retain the two step analysis dealing with the issue of preemption, but does not entirely address the question of what an abstract idea is.
"This update primarily focuses on abstract ideas," Holoubek told Managing IP. Discussing the USPTO's decision to have examiners identify abstract ideas by referring to precedent, Holoubek said, "One of the challenges they have is talking about the judicial decisions in a way that technically trained but not legally trained examiners can understand. It is interesting to see it written in the guidance that the Patent Office is telling examiners they can use what some refer to as judicial notice. What the Patent Office has said is courts don't look to provide any evidence of that, and that gives examiners license to do the same."
To assist examiners and practitioners in delineating the boundaries of abstractness the USPTO has provided seven new examples. "It is clear that the Patent Office does not have a good definition of what abstract is – nor do I think it could – so it tries to provide an idea through examples." Holoubek said. "There are a number of examples that show the boundaries of what is patentable or not."
She identified two particularly interesting new examples – 27 and 21. Holoubek believes example 27 is perhaps the most useful for practitioners in that it provides a streamlined eligibility analysis for a claim directed to remote access and stage of computer control software. "I was particularly glad to see something like this be deemed eligible. At the same time, I was surprised to see the Patent Office include it," she told Managing IP. Holoubek found example 21 useful since it provides information on why two similar claims can have different outcomes in the patent eligibility analysis. The example was modelled after the technology used in Google v. Simpleair.