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ARTICLE · 13 MAY 2016

USPTO Issues Updated Instructions To Examiners For Evaluating Eligibility Under Section 101

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As the U.S. Patent & Trademark Office continues to reject applications as being directed to ineligible subject matter in the wake of Alice Corp. v. CLS Bank Int'l, 573 U.S. __, 134 S. Ct. 2347 (2014)...

United StatesIntellectual Property
Eric Sophir
Eric Sophir
Carl Bretscher
Carl Bretscher
Kevin Greenleaf
Kevin Greenleaf
Matthew Horton
Matthew Horton
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As the U.S. Patent & Trademark Office continues to reject applications as being directed to ineligible subject matter in the wake of Alice Corp. v. CLS Bank Int'l, 573 U.S. __, 134 S. Ct. 2347 (2014), the agency has again offered guidance to the Patent Examining Corps requiring more specificity in rejecting claims under Section 101 of the Patent Act.1 This memorandum, which supplements the USPTO's 2014 and 2015 guidelines,2 is designed to provide applicants with more thorough, coherent, and systematic explanations of subject matter eligibility than they may have received in the past.

Analyzing subject matter eligibility is a two-step process.  In the first step of the analysis, the examiner must first determine whether the claim is directed to a judicial exception, such as an abstract idea, law of nature, or natural phenomenon. Then, if the examiner finds that it is, he or she must determine whether the claim contains additional elements that, taken either singly or

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