USPTO Issues an update on “Subject Matter Eligibility”

The USPTO recently issued new guidance to Patent Examiners regarding the Subject Matter Eligibility.

Below are the Highlights of the guidance based on Federal Circuit (FC) Decisions:

The update provides discussion of two recent decisions indentifying the eligible subject matter, namely

  • McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016)
    • In this case, the FC held that the claimed methods of Automatic lip Synchronization and facial expression animation using computer-implemented rules Patent Eligible under 35 U.S.C. 101, because they were not directed to an abstract idea.
  • BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F .3d 1341 (Fed. Cir. 2016).
    • In this case, the FC gave a judgment of ineligibility because the court failed to properly perform the second step of the Mayo/Alice Framework when analyzing a claimed system for filtering content retrieved from an internet computer network.

The overall update includes discussion of the concept of “preemption” & “Non- Precedential decisions” in a subject matter eligibility analysis.

Coming up…