Patent stakeholders have recognized the difficulties in consistently predicting what subject matter is patent-eligible, given the inconsistent and varying manner in which the Alice/Mayo test has been applied over the years. With the U.S. Patent and Trademark Office’s (USPTO’s) new guidance on Patent Eligibility and the revamping of the procedures for determining eligibility, here is what patent practitioners can do now.
What can patent practitioners do now?
- Make sure Examiners are adhering to the new guidance
The USPTO’s new guidelines attempt to provide consistency in examination procedures regarding patent-eligible subject matter. It is important to make sure Examiners are appropriately following the new 35 U.S.C.§101 guidance. If an abstract idea has been identified by the Examiner, confirm that the Examiner is identifying an appropriate abstract idea category. Moreover, even when an abstract idea is found, ensure that the Examiner is properly giving weight to all claim limitations when determining whether the abstract idea is integrated into a practical application.
- Be mindful of the new guidance when drafting applications
Perhaps the best way to get in front of and avoid a patent-eligibility challenge is during the application drafting stage. Practitioners should be aware of the new guidance in order to draft claims and tailor a specification that avoids the pitfalls of a §101 challenge. During claim drafting and prior to filing of an application, an analysis of the claims from the perspective of the new guidelines—both under 35 U.S.C. §§101 and 112—can prove to be an effective exercise.
- Consider whether updates to pending briefs at the USPTO would be useful
Many ex parte applicants—as well as patent owners whose claims have been challenged at the USPTO Patent Trial and Appeal Board (PTAB)—may want to consider requesting supplemental briefing to show how their claims are compliant with the new guidance. As with all USPTO guidance that does not rise to the level of official rule-making, an Examiner’s lack of adherence to the guidance is not a sufficient ground for appeal. But the rationale provided in the guidance should be indicative of how §101 challenges are to be analyzed across the Office, and so patent owners should consider whether an update to the PTAB to address the new guidance would be beneficial to their case.
* A previous version of this article first appeared in Law360.
This article appeared in the February 2019 issue of Global Patent Prosecution. To view our past issues, as well as other firm newsletters, please click here.
 2019 Revised Patent Subject Matter Eligibility Guidance.
 Id., p.7.