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The USPTO Strikes Back: Interim Guidance Update Promotes Software Patent Eligibility

The USPTO Strikes Back: Interim Guidance Update Promotes Software Patent Eligibility published on 21 Comments on The USPTO Strikes Back: Interim Guidance Update Promotes Software Patent Eligibility

In December 2014, the USPTO released its Interim Guidance on Patent Subject Matter Eligibility, which summarized the sprawling case law of 35 USC 101 into examiner instructions. The 2014 Interim Guidance was a cautious document, tracking closely with court opinions, but lacking insight into important questions that the courts had not yet answered. Regarding the critical issue of the types of claims that remain patent-eligible under 35 USC 101, especially for computer-related inventions, this material provided little comfort.

In late July, the USPTO released an update to the Interim Guidance with a remarkably different tone. Undaunted by the unchecked growth of invalidity decisions and very few findings of patent-eligible claims, the July update presents a set of hypothetical claims, characterizes these claims as patent-eligible, and provides an extensive analysis under Alice that supports this finding. Through this bold step, the USPTO fills crucial gaps in 35 USC 101 that the courts have failed and even refused to mend – and although the courts’ conformity with these opinions is by no means guaranteed, the July update adds much-needed balance to the discussion of subject matter eligibility.
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