By: J. Gibson Lanier, Ph.D.
On July 30, 2015, the USPTO issued its 3rd update to the subject matter eligibility guidelines. You can almost hear the finale for Rossini’s William Tell Overture playing upon its release. While this iteration like its predecessors may have flaws, that the USPTO has issued yet another update clearly shows that the USPTO is trying just as hard as the rest of us to understand the changed landscape in the world of patents with respect to subject matter eligibility. The most recent update provides additional examples relating to abstract ideas in light of recent court holdings such as DDR Holdings v. Hotels.com.
Of note in the present update, the USPTO instructs examiners “to refer to the body of case law precedent in order to identify abstract ideas by way of comparison to concepts already found to be abstract.” The guidelines further note that “this discussion is meant to guide examiners and ensure that a claimed concept is not identified as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea.” This focus of making sure that any assertion that a concept is an abstract idea parallels actual Supreme Court examples may prove the most beneficial to inventors and their counsel.
As with the earlier Interim Guidance, the PTO is seeking public feedback on the update. The deadline for comments is October 28, 2015.