The United States Patent and Trademark Office has taken a noticeably stronger stance on subject-matter eligibility following the Supreme Court’s recent decision in Alice Corp. v. CLS Bank. The Alice Corp. v. CLS Bank decision limited software patents that were directed at what the Supreme Court considered to be “abstract ideas.” On August 4, the USPTO announced that it had even reviewed applications that were in condition for allowance prior to the Supreme Court’s decision, but yet to issue. Consequently, the USPTO withdrew notice of allowances for several applications.
The USPTO’s rejections have generally included boiler plate language closely following the preliminary examination instructions that were issued in response to Alice Corp. The rejections typically identify that a given claim is “directed to non-statutory subject matter” and briefly identify the “abstract idea” in question. This approach has been met with some criticism, because rejections made in this way can be vague and offer little analysis for a patent applicant to use to improve their application. As a result, many practitioners have sent comments to the USPTO suggesting ways to ensure further clarification. The official comment period ended on July 31. The USPTO expects to issue further examination guidance in response to the comments by this fall.
source: Maier & Maier, PLLC
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