Revised Patent Eligibility Criteria as Per the New USPTO Memo and Its Potential Impact on Rejections
In a recent development, the United States Patent and Trademark Office (USPTO) has sent a memo on patent eligibility rejections to Technology Centers 2100, 2600, and 3600. The memo, authored by Deputy Commissioner of Patents Charles Kim, has sparked conversations among industry experts, particularly Clint Mehall and John Rogitz.
Both Mehall and Rogitz serve on the ad hoc Advisory Committee of the publication named Unleashed. Mehall is a partner with Davidson Kappel, LLC, while Rogitz is the managing attorney for Rogitz & Associates. The memo, a reminder on the proper evaluation of subject matter eligibility of claims under 35 U.S.C. 101, seems to hint at applying the Broadest Reasonable Interpretation (BRI) before examiners make their 101 analysis, which appears to be new.
The conversation between Mehall and Rogitz, focused on the implications of this memo for patent eligibility rejections, ended on a somber note, acknowledging the challenges presented by 101 jurisprudence. They agreed that 101 jurisprudence is anything but uniform, consistent, and predictable.
Mehall maintained optimism that changes in the MPEP could translate the memo's positive tone into real and sustained action. He expressed hope that the memo would encourage examiners to avoid rejections if there is any ambiguity. Rogitz reflected on the USPTO's internal strides to reduce 101 rejections.
However, both experts stressed that meaningful reform must come from higher authorities. They believe that Congress must step in to create lasting changes, as current protocols stifle innovation, particularly for smaller entities.
The entire podcast episode featuring the conversation between Mehall and Rogitz can be downloaded from various podcast platforms or accessed on Buzzsprout. A growing archive of previous episodes from Unleashed is also available. Other conversations from Unleashed can be found on the Unleashed YouTube channel.
It is important to note that the memo does not announce any new USPTO practice or procedure. The memo includes two examples that are difficult, if not impossible, to reconcile. Despite these challenges, the memo serves as a reminder of the ongoing efforts to address the complexities of patent eligibility rejections.
