Earlier in April and May the USPTO updated its Section 101 subject matter eligibility guidelines — also known as the Alice guidelines based on the recent federal court ruling of Berkheimer v. HP, Inc. This ruling has been a relief for patent attorneys and their software based inventors.
Based on the current Alice framework utilized by the USPTO, at the step 2B analysis, the examiner is supposed to make a determination that the claimed features or combination thereof is a well-understood, routine and conventional activity. In Berkheimer, the federal circuit held that such an inquiry requires a factual determination. Thus, based on the updated guidance found here and here, the examiner is now required to provide a prima facie showing that the elements claiming patentability are well-understood, routine, and conventional-activity. The guidance specifically enumerates that in doing so the examiner:
(1) finds an express statement from the applicant (either in the specification or during prosecution) “that demonstrates the well-understood, routine, conventional nature of the additional element(s)[,]”
(2) provides a citation of a court decision noting the above elements (and combination thereof) to be demonstrating the well-understood, routine, conventional nature of the additional element(s),
(3) provides “a citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s)[,]” or
(4) takes official notice that the additional elements are well-understood, routine and of conventional nature.
Based on this guidance, here are our updated tips:
- Applicants and their attorneys need to be careful by avoiding writing statements of what is known to a person or ordinary skill in the art in the specification or during prosecution, since those statements can now be held against the invention.
- Provide as much technical information as possible describing the software invention and maintain following the requirements of the Alice framework.
- If official notice is taken by the examiner, challenge its sufficiency based as outlined in MPEP § 2144.03, when appropriate.
Overall, we find this guidance as a welcoming refinement to the Alice framework and examiners will no longer be able to make a conclusory statement that the combination of elements are well-understood, routine or conventional activity.
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