Three Ways the New USPTO Guidance for Patent Eligibility Can Benefit Patent Applicants

摘要

The USPTO's new guidance appears to provide multiple mechanisms that should assist patent applicants with § 101 rejections and reduce the occurrence of such rejections moving forward. Although the guidance does not have the force of law, all USPTO personnel are expected to follow it, and as discussed, the PTAB has already begun implementing the guidance in appeals decisions.9 As such, applicants should review any current rejections for compliance with the guidance, and consider filing a supplemental response in cases where they have recently responded. Applicants (especially in the computer and software related arts) should also draft both their applications and claims with an eye towards the "practical applications" enumerated by the guidance and be sure to describe both the technical problem in the existing art and the claimed invention's solution to such problems as part of a practical application. While patent applicants can expect further development of the meaning of a "practical application," at a first glance the USPTO's guidance provides a framework that appears consistent with Commissioner Iancu's pro-patent reputation and should provide immediate support for patent applicants dealing with complex §101 issues.