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USPTO issues new guidance on 101

USPTO issued new guidance on recent Federal Circuit decisions involving patent eligible subject matter under section 101.

The memo is available on

Avoid oversimplifying the claims – McRO

The new guidance discusses the McRO and BASCOM decisions. Regarding McRO, the guidance emphasizes not overgeneralizing the claims and considering whether the subject matter allows a computer to perform a function not previously performable by a computer. In reference to McRO, the guidance also highlights use of the specification to interpret the claims and whether they solve a technical problem, which may be indicative of the claims not being directed to an abstract idea.

Consider the combination – BASCOM

The new guidance encourages examiners to consider claim elements in combination, as well as individually, when determining whether the claim as a whole amounts to significantly more. In BASCOM the court found that the individual elements were generic computer, network and Internet components, but found the combination amounted to significantly more.

Preemption – more to come…

The update includes a short discussion of “preemption” as potential additional evidence indicative of whether the claims are directed to an abstract idea. However, the update stops short of providing any definitive guidance, but does say guidance on this point is forthcoming.

Finally, the update suggests use of non-predential decisions (e.g., SmartGene and Cyberfone) should be limited only to cases that closely match the facts in those decisions.

My thanks to Greg Stark for this post.

Principal & Chief Innovation Officer

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