July 23, 2018

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Latest Tool in the Fight against Alice: USPTO Publishes a New Eligibility Quick Reference Sheet

Struggling to keep case law relating to subject matter eligibility organized?  In February 2018, the United States Patent and Trademark Office (USPTO) released an improved Eligibility Quick Reference Sheet, providing patent practitioners with a useful tool for analyzing claims in view of 35 U.S.C. § 101 subject matter eligibility requirements.

New Quick Reference Sheet Overview

The Eligibility Quick Reference Sheet lists court decisions related to subject matter eligibility in a short three pages, organizing court decisions to fit into the Mayo framework.  These court decisions are categorized by concepts that the courts have identified as abstract ideas.  The USPTO previously explained in its July 2015 Subject Matter Eligibility Update that “these associations [of Supreme Court and Federal Circuit eligibility decisions with judicial descriptors] define the judicial descriptors in a manner that stays within the confines of the judicial precedent.”  The categorized concepts identified by the courts and identified in the Eligibility Quick Reference Sheet include fundamental economic practices, certain methods of organizing human activity, an idea of itself, and mathematical formulas. During examination, an Examiner is required to compare claims to a court decision finding subject matter ineligibility in order to maintain a subject matter eligibility rejection.  The Eligibility Quick Reference Sheet identifies court cases in which claims have been held subject matter ineligible as being directed to an abstract idea as well as court cases in which claims have been found subject matter eligible.

New Quick Reference Sheet Improves Upon Prior Reference Sheets

In addition to incorporating the latest relevant decisions from the Court of Appeals for the Federal Circuit, the February 2018 Eligibility Quick Reference Sheet improves upon previous eligibility reference sheets by including sub-categories within the above-noted judicially identified categories.  The sub-categories enable patent practitioners to more quickly identify the most relevant cases.  In addition, citations are provided to the recently updated manual of patent examining procedure (MPEP), enabling patent practitioners to fit the relevant case into the Examiner guidance as described in the MPEP.

Conclusion

The February 2018: Eligibility Quick Reference Sheet may serve as a useful tool for patent practitioners to stay up-to-date on the latest subject matter eligibility court decisions and aid in analyzing claims in view of 35 U.S.C. § 101 subject matter eligibility.

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About this Author

Christina Sperry, Medical Technology Attorney, Mintz Levin Law Firm
Member

Christina is an experienced patent attorney whose clients are focused in the medical technology space, from start-ups to large corporations and academic institutions. She advises on patent preparation and prosecution and provides opinions on infringement, validity, and right-to-use for clients in the US and internationally.

The areas of technology in which Christina is particularly focused include mechanical, electrical, and electro-mechanical technical fields such as medical and surgical instruments and devices including endoscopic, soft tissue...

617-348-3018
Kevin Amendt, Technology Specialist, Mintz Levin Law Firm
Technology Specialist

As a Technology Specialist and registered Patent Agent, Kevin's focus is on IP law, including patent procurement and IP litigation.

Kevin’s practice includes all aspects of patent prosecution. He drafts and prosecutes patent applications and performs patentability, infringement, and invalidity analysis. He also assists on due-diligence projects and reexaminations.

Kevin is involved in patent litigation, including infringement and invalidity issues, and other intellectual property disputes. Kevin plays an active role in analyzing prior art, infringement material, and discovered documents to formulate and support litigation positions.

617.348.4863