On April 19, 2018, the United States Patent and Trademark Office (USPTO) issued a memorandum informing the Examining Corps of recent changes in examination procedure for subject matter eligibility. The bedrock of subject matter eligibility found in 35 U.S.C § 101 specifies that “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” may be patent eligible. However, the Supreme Court has established several judicial exceptions to limit the scope of the patent eligible subject matter set out in the statute.
For example, and as pertains to the memo, the Court has held that patents directed to abstract ideas are patent ineligible unless one or more of their elements amount to significantly more than the abstract ideas themselves. Examiners can find an element (or combination of elements) does not amount to significantly more than an abstract idea if the element (or combination of elements) represents a well-understood, routine, conventional activity. Prior to a recent Federal Circuit decision in Berkheimer v. HP Inc., whether an element represented a well-understood, routine, conventional activity was a matter of law. See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). In Berkheimer, however, the Federal Circuit held that “[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.”
Accordingly, the memo released by the USPTO requires Examiners to provide factual support for their claims that an element (or combination of elements) is well-understood, routine, conventional activity. More specifically, the Examiner is required to support a rejection in writing with one or more of the following:
1. A citation to a statement made by the applicant demonstrating the well-understood, routine, conventional nature of the element. 2. A citation to a court decision discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the element. 3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the element. 4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the element.
The memo containing the new requirements placed on Examiners is welcome news to patent applicants. Patent applicants now can, and should, require Examiners to provide factual support for an Examiner’s assertion that an element (or combination of elements) is well-understood, routine, conventional activity. Further, the memo serves as a warning to the applicant to avoid using language in the patent application that indicates an idea is well-understood, routine, or conventional activity as that language may be used against them later on.
In conclusion, as patent applicants become aware of the new memorandum and learn how to use its contents in their favor, the sheer number of vague abstract-idea rejections commonly used by the Examining Corps should soon dwindle.