“Director Iancu should consider personally holding a video training session for all patent examiners and PTAB judges to signal the importance of the new Section 101 guidance and create a shared understanding of it at the USPTO.”

Before the USPTO released the 2019 Revised Patent Subject Matter Eligibility Guidance, I conducted an interview with USPTO Technology Center Director Tariq Hafiz for my Clause 8 podcast. During the interview, we discussed whether it is realistic to expect patent examiners to perform a complete Section 101 analysis, including comparing a claimed invention to concepts that have been found patentable and not patentable under Section 101 in Federal Circuit and Supreme Court decisions. Unfortunately, this has often involved examiners pigeonholing claims at issue into completely unrelated court decisions that found claims to be directed to an abstract idea. In the new guidance, the USPTO plainly states that the approach of examiners comparing claims to a growing number of court decisions involving Section 101 has “become impractical.”

USPTO Director Andrei Iancu should be given an enormous amount of credit for dealing with the patent eligibility mess at the USPTO in an expeditious and thoughtful manner by releasing this new guidance and putting it immediately into effect. The difficult part now for the USPTO is to make sure that patent examiners properly apply the guidance in a uniform manner. Director Iancu should consider personally holding a video training session for all patent examiners and PTAB judges to signal the importance of this new guidance and create a shared understanding of it at the USPTO. Luckily for the IP community, people like Technology Center Director Hafiz are already in place to help make sure that the new guidance is properly implemented in the parts of the USPTO that most need it. Yet, there is still a risk that examiners don’t form the same appreciation for how the guidance should change their approach as the training filters through different levels of the USPTO.

The Challenges of Implementation

During my first conversation with an examiner regarding the new guidance, I was reminded that it would not be an elixir for solving the confusion regarding patent eligibility at the USPTO. That particular examiner was aware of the new guidance but did not yet have a chance to personally review it or receive training. Nonetheless, the examiner somehow already formed an impression regarding the new guidance. The examiner wrongly thought that the new guidance created a new “practical application” burden that needed to be met by an applicant to overcome an existing Section 101 rejection. This is contrary to the guidance actually identifying an alternative path to establishing that a claim is patentable under Section 101 “if the judicial exception is integrated into a practical application of the judicial exception.”

Fortunately, I was able to persuade the examiner to withdraw a Section 101 rejection by explaining the new guidance to him. Although the new guidance has a helpful one-paragraph summary at the beginning, I needed to walk the examiner through many other sections of the 27 pages of the new guidance in order to convincingly describe the new analysis that needs to be performed by examiners regarding Section 101.

A Visual Approach

To make the process of explaining the new guidance to examiners easier in the future, I prepared the flowchart below. This flowchart is based on a previous flowchart that was provided by the USPTO in 2014 after the Alice decision and the new guidance. Hopefully, examiners and practitioners can use this flowchart while the USPTO is finalizing the training materials for the new guidance.