by Dennis Crouch
Director Iancu has made clear that the current state of patent eligibility jurisprudence is untenable. Examiners need clear guidance — something he and I both see as lacking in the Supreme Court jurisprudence. In addition to being ambiguous, we also share the perspective that the Alice/Mayo test unduly restricts the scope of eligible subject matter. The PTO’s action here involves several fronts: (1) issuing guidance that is as-clear-as-possible for examiners and applicants; (2) working with Congress to legislatively broaden eligibility scope; (3) using the PTO’s to push public sentiment toward supporting strong and broad patent rights (when an underlying invention truly exists).
On the first front, the USPTO has: (1) issued a new “Berkheimer memorandum” focusing on the Federal Circuit’s holding in Berkheimer that”[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination;” and (2) issued a Request for Public Comment on USPTO “subject matter eligibility guidance, and particularly … guidance in the Berkheimer memorandum to the Patent Examining Corps.”
The USPTO follows a multi-step process in determining patent eligibility. First, the office considers whether the invention meets the express statutory requirements under Section 101 (“process, machine, manufacture, or composition of matter, or . . . improvement thereof”). This first step is at times called either Step 0 or Step 1 of the eligibility analysis. After satisfying the statute, the PTO must then consider whether the atextual limitations apply (abstract idea, law of nature, natural phenomenon). In Alice/Mayo, the Supreme Court explained that this later inquiry involves two sub-steps identified as either (a) Alice/Mayo Step 1 and 2 or (b) Step 2A and 2B of the USPTO Eligibility Guidance. In the two sub-steps, the Agency must first determine whether the claim is directed toward one of the eligibility exceptions. Then, if so directed, determine whether the claim includes “significantly more” than the ineligible concept — such as an “inventive concept.”
Although eligibility is considered a question of law, an open issue is the extent that underlying elements are questions of fact. In Berkheimer, the Federal Circuit started to answer this question — by holding that “whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.”
Running with that holding the Berkheimer memo requires examiners base any conclusion of well-understoodness upon evidence. Running in the background here is a reminder that patent examination begins with an assumption of patent eligibility unless the examiner shows otherwise. In the memo, the PTO identifies four ways to prove that an element is well-understood in the art:
- An express admission by the applicant;
- A citation to a PTO-approved court decision holding that a the particular element at issue is well-understood in the art;
- “A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element.” Here, the focus is not simply whether the element was known in the prior art, but whether it was “widely prevalent or in common use in the relevant field.” Here, the USPTO draws in written-description doctrine – noting that this is “comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. 112(a); or
- Taking “official notice” of the well-understoodness of the element. The memorandum cautions that “[t]his option should be used only when the examiner is certain, based upon his or her personal knowledge, that the additional element represents well-understood, routine, conventional activity engaged in by those in the relevant art, in that the additional elements are widely prevalent or in common use in the relevant field, comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. 112(a).” Further, if an applicant challenges the “official notice” then the examiner must provide direct evidence to satisfy the element.
The PTO is looking for commentary by August 20, 2018 to Eligibility2018@uspto.gov.