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.
Continue reading The USPTO Strikes Back: Interim Guidance Update Promotes Software Patent Eligibility
Interviews between applicants and examiners can be very productive for moving cases through prosecution. Accordingly, the USPTO has implemented a First Action Interview Pilot Program (“FAIP”), in which applicants and examiners conduct an interview before the first action on the merits. This objective is sound: an open conversation, before the examiner has established a position, can educate the examiner about the invention, and allow the examiner to focus the first search and the first office action on the most important claim elements.
However, as currently implemented, the program exhibits significant disadvantages that diminish the achievable rewards. Indeed, an application that is enrolled in the First Action Interview Pilot Program (FAIP) may incur significant disadvantages over ordinary examination that exceed the benefits of the program.
Continue reading First Action Interview Pilot Program: Good Idea, Flawed Process
Unwritten rule #1 of patent examination: If a reply to an office action includes no claim amendments, the examiner can simply copy-and-paste the last rejection.
Continue reading Claim Amendments: Clarifying vs. Narrowing
Chess, when played beyond a basic skill level, is not a game about pieces; it’s about reading your opponent.
Over time, I have reached a similar realization about patent prosecution.
Continue reading The Rejection Behind the Office Action