Volume 49, Issue 3
BPLA Comments on Changes in Examination Procedure Pertaining to Subject Matter Eligibility
BPLA Patent Office Practice Committee Co-Chairs Timothy V. Fisher, Nicole A. Palmer, Jonathan B. Roses
Timothy V. FisherNicole A. PalmerJonathan B. Roses
August 20, 2018 Via E-Mail: eligibility2018@uspto.gov
Office of Patent Legal Administration
United States Patent and Trademark Office
P.O. Box 1450 Alexandria, VA 22313-1450 Re: Comments on Changes in Examination Procedure Pertaining to Subject Matter Eligibility, in response to requests for comments at 83 Fed. Reg. 17536 (April 20, 2018) Dear Sir: The Boston Patent Law Association (“BPLA”) thanks the United States Patent and Trademark Office (“USPTO”) for the opportunity to comment on the USPTO’s Memorandum regarding Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (April 19, 2018) (“the Memorandum”). The BPLA is an association of intellectual property professionals, providing educational programs and a forum for the exchange of ideas and information concerning patent, trademark, and copyright laws in the First Circuit, focusing on the greater Boston area. These comments were prepared with the assistance of the Patent Office Practice Committee of the BPLA. The BPLA submits these comments solely as its consensus view. They are not necessarily the views of any individual member, any firm, or any client. The BPLA thanks the USPTO for its efforts to provide guidance to clarify how the USPTO will determine subject matter eligibility in accordance with prevailing jurisprudence. The BPLA supports the changes in examination procedure pertaining to subject matter eligibility based on the recent Berkheimer decision, as set forth in the Memorandum. The BPLA believes that the guidance in the Memorandum will help both examiners and applicants navigate the factual analysis regarding whether certain claim limitations represent well-understood, routine, or conventional activity. While future case law will further demarcate the bounds of what is or is not well-understood, routine, or conventional, the Memorandum’s description of four categories of evidence an examiner can use to show that an additional element is well-understood, routine, or conventional provides a helpful framework for the analysis under step 2B of the USPTO’s subject matter eligibility test. This framework will help examiners better articulate a finding that additional claim limitations do or do not add significantly more than a recited judicial exception, and will also help applicants to better respond to such findings. We offer these comments on the Memorandum to assist the USPTO in its efforts to implement the proposed changes.1