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USPTO
Again revises guidelines
About what’s abstract

The US Patent and Trademark Office (USPTO) has again updated its guidelines for subject matter eligibility under  35 U.S.C. § 101. 

The new guidance will help patent examiners deal with applications that contain functional language, and in particular with applications where functional language is used to claim computer-implemented inventions.

As the new guidelines note,

The patent examination process must ensure that: (1) The claims of an application have proper written description and enablement support under 35 U.S.C. 112(a) in the disclosure of the application, and (2) functional limitations (i.e., claim limitations that define an element in terms of the function it performs without reciting the structure, materials, or acts that perform the function) are properly treated as means (or step) plus function limitations under 35 U.S.C. 112(f), and are sufficiently definite under 35 U.S.C. 112(b), as appropriate. These requirements are particularly relevant to computer-implemented functional claims.

While patent examiners and court have tried to distinguish between “abstract ideas” (that aren’t patentable) and non-abstract inventions (that are patentable) that dichotomy has proved problematic: 

The Federal Circuit has now issued numerous decisions identifying subject matter as abstract or non-abstract in the context of specific cases, and that number is continuously growing. In addition, similar subject matter has been described both as abstract and not abstract in different cases. The growing body of precedent has become increasingly more difficult for examiners to apply in a predictable manner, and concern have been raised that different examiners within and between technology centers may reach inconsistent results.

Under the new guidelines, abstract ideas are defined to include mathematical formulas, certain ways of organizing human activity, and mental processes.

The new guidelines took effect January 7. The USPTO is inviting comments on them.

Written comments about the new guidelines may be sent to 112Guidance2019@uspto.gov by March 8.

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