New Examiner Training Materials On Patent Subject Matter Eligibility

In the wake of the Supreme Court's Alice decision on patent subject matter eligibility, patent stakeholders have anticipated a reaction from the United States Patent and Trademark Office (USPTO) in regard to patent examination practice relative to 35 U.S.C. 101. While many interested parties hoped that Alice would settle the issue, few would argue that the issue has been settled. Indeed, the USPTO has issued guidance on patent subject matter eligibility, including training materials for patent examiners.¹

The latest training materials introduced by the USPTO in February 2016 include a workshop with several examples of claims disputed under 35 U.S.C. 101. The training materials are intended for use with the July 2015 examples provided in Update Appendix 1, and include an examination of two pairs of claims. While the examples are unlikely to significantly clarify the issue of subject matter eligibility, they may provide some insight into how patent examiners are