What the New USPTO Memo on 101 Means for Patent Eligibility Rejections

In this week’s edition of IPWatchdog Unleashed, I spoke with with Clint Mehall, a partner with Davidson Kappel, LLC, and John Rogitz, who is managing attorney for Rogitz & Associates. Both are prominent voices in the patent world, and they also serve on our ad hoc IPWatchdog Advisory Committee. Our conversation focuses on 35 U.S.C. 101, and in particular, what a recent memo from the Office means for patent eligibility rejections.

Decoding the Memo on Patent Eligibility Rejections

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. The memo also specifically stated that it “is not intended to announce any new USPTO practice or procedure and is meant to be consistent with existing USPTO guidance.” Notwithstanding, there does seem to be important new emphasis on the patent eligibility inquiry, and particularly on when rejections are appropriate. Discussing this memo, what it means, and the current patent eligibility landscape was the focus of my conversation with John and Clint.

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. And we all found the distinction drawn between two examples included in the memo to be at least difficult—if not impossible—to reconcile.

The Abstract Idea Conundrum

We dissected the persistent problem of “abstract ideas” and rejections that often intentionally seem to fail to acknowledge the real innovations being claimed, which has a very harmful impact on software generally and AI specifically. John and Clint both expressed frustration at how detailed claims are often deemed ineligible due to their mathematical elements, even as broad claims pass muster. Obviously, it should be impossible for a broad generic claim to be patent eligible while a more narrow dependent claim is found to be ineligible, but that is what the memo seems to say, and examiners seem to believe. Still, if the entire Venn diagram covered by a claim is eligible then a subset of the Venn diagram must necessarily always be patent eligible. Sadly, the Office does not seem willing to accept this irrefutable truth, which only lends credence to the belief that the Office’s actions on patent eligibility are often arbitrary and capricious, or at the very least illogical and ill-conceived.

A Sobering Outlook

Our conversation ended on a somber note, acknowledging the immense challenges presented by 101 jurisprudence, which is anything but uniform, consistent and predictable. Clint and John both agreed Congress must step in to create lasting changes, as current protocols stifle innovation, particularly the innovations made by smaller entities. Still, Clint maintained optimism that while statutory reform would be best, changes in the MPEP could translate the memo’s positive tone into real and sustained action. John reflected on the USPTO’s internal strides to reduce 101 rejections, although he too stressed meaningful reform must come from higher authorities.

More IPWatchdog Unleashed

You can listen to the entire podcast episode by downloading it wherever you normally access podcasts or by visiting IPWatchdog Unleashed on Buzzsprout. You can also watch other IPWatchdog Unleashed conversations on the IPWatchdog YouTube channel. For more IPWatchdog Unleashed, see below for our growing archive of previous episodes.