USPTO Memo Guidance on Rule Changes Impacting Patent Ineligibility Denials
In a recent roundtable discussion, John Rogitz and Clint Mehall, two prominent voices in the patent world, discussed the United States Patent and Trademark Office (USPTO) memo on patent eligibility rejections. The conversation, which can be watched on the our publication name Unleashed YouTube channel, focused on 35 U.S.C. 101 and its implications for patent eligibility rejections.
The discussion, held between Rogitz, managing attorney for Rogitz & Associates, and Mehall, partner at Davidson Kappel, LLC, and serving on the Unleashed Advisory Committee, touched upon the current protocols that stifle innovation, particularly among smaller entities. Both John and Clint agreed that Congress needs to step in to create lasting changes.
The memo, written by Deputy Commissioner of Patents Charles Kim, is a reminder on the proper evaluation of subject matter eligibility of claims under 35 U.S.C. 101. The memo encourages examiners to avoid rejections if there is any ambiguity, which Clint Mehall referred to as a "tie goes to the runner" approach to patent eligibility.
However, the memo's distinction drawn between two examples included is at least difficult-if not impossible-to reconcile. John Rogitz observed that the memo hints at applying the Broadest Reasonable Interpretation (BRI) before examiners make their 101 analysis, which seems to be new.
The memo does not announce any new USPTO practice or procedure and is meant to be consistent with existing USPTO guidance. John stresses that meaningful reform must come from higher authorities, while Clint maintains optimism that changes in the MPEP could translate the memo's positive tone into real and sustained action.
John also reflected on the USPTO's internal strides to reduce 101 rejections. He noted that the memo focuses on the patent eligibility inquiry, particularly on when rejections are appropriate. The conversation ended on a somber note, acknowledging the challenges presented by 101 jurisprudence, which is anything but uniform, consistent, and predictable.
The podcast episode can be downloaded from various platforms or accessed on Buzzsprout. A growing archive of previous our publication name Unleashed episodes is available. The person who conducted the roundtable last week at Unleashed was not specified.
101 jurisprudence has been a contentious issue in the patent world, and this discussion provides valuable insights into the current state of patent eligibility rejections and the potential for change. The memo serves as a reminder for examiners to approach patent eligibility with caution and to avoid overly broad rejections. As John and Clint emphasized, meaningful reform is needed to foster innovation and protect patent rights.
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