"Both John and Clint spotted important nuances in the memo that practitioners should be aware of, including most significantly a shift in tone. Clint noted that the memo encouraged examiners to avoid rejections if there was any ambiguity-what I referred to as a "tie goes to the runner" approach to patent eligibility. John observed that the memo hinted at applying the Broadest Reasonable Interpretation (BRI) before examiners make their 101 analysis, which does seem to be new."
"At the beginning of August, the United States Patent and Trademark Office (USPTO) sent a memo on patent eligibility rejections to Technology Centers 2100, 2600 and 3600. Written by Deputy Commissioner of Patents Charles Kim, the memo was described by the Office as a reminder on the proper evaluation of subject matter eligibility of claims under 35 U.S.C. 101."
USPTO guidance to specific Technology Centers reiterates existing eligibility standards while emphasizing examiner caution on 35 U.S.C. 101 rejections. Examiners are urged to avoid subject-matter rejections when claim scope is ambiguous and to apply claim-interpretation principles, including the Broadest Reasonable Interpretation (BRI), before conducting eligibility analysis. The guidance highlights a tonal shift toward deference to claim scope and appears to reduce the likelihood of eligibility rejections where ambiguity exists. Inconsistencies between illustrative examples create uncertainty for practitioners, who should prepare clear claim-construction and eligibility arguments in prosecution and appeals.
Read at IPWatchdog.com | Patents & Intellectual Property Law
Unable to calculate read time
Collection
[
|
...
]