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IP Alert: USPTO Issues New Patent Subject Matter Eligibility Guidelines

May 6, 2016

Today the U.S. Patent and Trademark Office (USPTO) published a Subject Matter Eligibility Update, issuing a request for comments on new guidance to examiners in determining eligibility under 35 U.S.C. § 101.

As part of the update, the USPTO provided new life science examples, a copy of which is available on the USPTO’s website in their Examination Guidance and Training Materials. These examples are intended to serve as a teaching tool to assist examiners and the public in understanding how the USPTO would apply the eligibility guidance in certain situations.

The update also includes a memorandum instructing patent examiners how to formulate a subject matter rejection under section 101 and how to evaluate an applicant response to such a rejection. The memo, titled “Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection,” was drafted in response to previous public comments to the July 2015 Subject Matter Eligibility Update. The USPTO also issued 2016 updates of its Index of Eligibility Examples and Index of Subject Matter Eligibility Court Decisions.

The USPTO has set an open-ended period for comment on the May 2016 proposed guidelines. Further information is available in the update here.

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