Michelle K. Holoubek discusses with Law360 updated USPTO section 101 guidance regarding patent eligibility that was affected by recent U.S. Supreme Court decisions Alice and Mayo. The new guidance is expected to increase the difficulty of acquiring patents, as many inventions may now be labeled unpatentable abstract ideas.

Discussing the USPTO’s implementation of a “two-part framework” dealing with the issue of preemption, a shift away from a stand-alone test for eligibility, Holoubek said, “The patent office appears to be saying that’s not enough of an argument. It’s something to be considered, but it’s not the end of the argument.”

The guidance also allows for examiners to reject an application due to routine and conventional elements without citing evidence, relying instead on their expertise in the art, Holoubek told Law360. “For practitioners looking for a way to argue that a patent is eligible, they’re going to have a hard time if examiners are not required to explain why something is routine and conventional.”

While some are optimistic that the new guidance will better flush out the boundaries of eligibility, Holoubek told Law360 that it doesn’t entirely address the question of what an abstract idea is. Holoubek concludes her comments noting, “My impression is that this is a good step forward. There are things that will be challenging for practitioners, but overall, it’s nice to see that the patent office is generally trying to be helpful and move the process along.”

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