USPTO Updates Examination Guidelines For Patent Eligible Subject Matter

As noted in our recent update " Factual Questions May Preclude Early Resolution of Invalidity Under Section 101," the Federal Circuit recently recognized that when determining whether a patent claim is directed to patent eligible subject matter, the "question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact."¹ In both Berkheimer and Aatrix², the Federal Circuit was exploring this issue in the context of litigation. The United States Patent and Trademark Office ("USPTO") has now followed suit and issued a memo on April 19, 2018, to the Patent Examining Corps updating examination guidelines for Section 101 rejections based on the Berkheimer and Aatrix decisions ("Memo").³ The Memo addresses the second step of the two-step inquiry established by the Supreme Court in Alice where (1) a determination is first made as to whether the claims at issue are directed