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Patent Office Guidance for Examiners in wake of CLS Bank Decision: No Change for Now

On May 13, 2013, the Patent Office issued a memo to USPTO examiners after the CLS Bank et al. v. Alice Corp. Federal Circuit en banc decision of last week.  The memo instructs examiners to maintain existing examination procedure for evaluating subject matter patentability.  Deputy Commissioner for Patent Examination Policy, Andrew Hirshfeld, advised examiners:  ” . . . at present, there is no change in examination procedure for evaluating subject matter eligibility. Current procedure detailed in MPEP 2106 should continue to be followed.”

The memo summarizes the initial takeaways from CLS Bank as follows:

  • There was agreement that the test for eligibility is not a rigid, bright line test and must be made by evaluating a claim as a whole, on a case-by-case basis, using a flexible approach.
  • Many of the judges explicitly noted that the test for eligibility is a separate and distinct inquiry from other patentability concerns, particularly novelty and obviousness.
  • It was generally agreed that when evaluating the claim as a whole the claim must be analyzed to determine whether the additional limitations add significantly more, or in other words add meaningful limits, to the abstract idea or law of nature.

The memo concludes that further study is needed and that this is an ongoing consideration in light of the decision:

Given the multiple divergent opinions, the USPTO is continuing to study the decision in CLS Bank and will consider whether further detailed guidance is needed on patent subject matter eligibility under 35 U.S.C. § 101.


Timothy Bianchi

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