USPTO Releases Updated §112 Guidance

On January 7, the U.S. Patent and Trademark Office (USPTO) released “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112” that provides guidance to USPTO examiners and personnel.  The §112 guidance explains the proper analysis for (i) examining means-plus-function limitations under 35 U.S.C. §112(f) and determining compliance with 35 U.S.C. §112(b) for computer-implemented claims invoking §112(f), and (ii) examining functional limitations in computer-implemented claims for compliance with 35 U.S.C. §112(a).

In particular, the guidance explains the applicability of §112(f) to computer-implemented claim limitations in view of Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc), and the inquiries necessary to determine whether a functional claim term invoking §112(f) is definite under §112(b).  For a computer-implemented claim limitation invoking §112(f), “the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. §112(b).”

Further, the guidance explains the disclosure requirements under §112(a) when claiming computer-implemented inventions using functional limitations, as discussed by the Federal Circuit in Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671 (Fed. Cir. 2015).  Specifically, the guidance reiterates the Federal Circuit’s analysis of computer-implemented functional claim language in Vasudevan for compliance with the enablement and written description requirements of 112(a), which stated that the specification must describe a computer-implemented invention in terms of how the functional result is achieved (e.g., an algorithm and/or a finite sequence of logical steps), and not merely by the functional result itself—even for non-means-plus-function claim limitations.  However, the guidance also acknowledges that computer functions that are well-known in the art need not be described in detail in the specification to meet the written description requirement.

This new §112 guidance appears to summarize existing law and USPTO policy regarding examining computer-implemented claims for compliance with 35 U.S.C. §112.  From a practical standpoint, we do not expect any substantial changes to examination as a result of these guidelines.

USPTO Releases Updated §101 Guidance

On January 7, the USPTO released “2019 Revised Patent Subject Matter Eligibility Guidance” that makes significant changes to how USPTO examiners and other personnel are to apply the first step of the Alice analysis (USPTO Step 2A), which determines whether a claim is “directed to” an abstract idea.  This new guidance supersedes all prior guidance and is immediately applicable to all applications filed before, on, or after today.  In brief summary, the revised guidance divides the Step 2A analysis into two prongs.

Under the first prong of Step 2A, the USPTO limits the categories of subject matter that will be considered to be an abstract idea to: “mathematical concepts,” “certain methods of organizing human activity,” and “mental processes.”  Under the first prong analysis, with rare exception, a claim that does not recite subject matter within one of these three categories will be patent-eligible because it is not directed to an abstract idea under the Step 2A analysis.

Under the second prong of Step 2A, when a claim recites subject matter within one of the three enumerated abstract idea categories, the claim as a whole must be analyzed to determine whether the recited abstract idea is “integrated into a practical application” of the abstract idea.  If the recited abstract idea is “integrated into a practical application” of the abstract idea, the claim is not “directed” to the abstract idea, and thus is patent-eligible under Step 2A.  Only when the recited abstract idea is not “integrated into a practical application” of the abstract idea, will the analysis proceed to Step 2B.

The revised Step 2A framework also apples to claims reciting “laws of nature” and “natural phenomena.” However, the USPTO has not narrowed the type of subject matter that falls within these categories.

Holiday Closing – Martin Luther King Jr. Day

Oliff PLC and the USPTO will be closed on Monday, January 21, 2019 in observance of a Federal holiday.  Patent applications and other papers due in the USPTO, the Court of Appeals for the Federal Circuit and many U.S. District Courts on that day will be timely if filed on Tuesday, January 22.

Holiday Closing – New Year’s Day

Oliff PLC and the USPTO will be closed on Tuesday, January 1 in observance of a Federal holiday. Patent applications and other papers due in the USPTO, the Court of Appeals for the Federal Circuit and many U.S. District Courts on that day will be timely if filed on Wednesday, January 2.

Holiday Closing – Christmas Day

Oliff PLC and the USPTO will be closed on Tuesday, December 25 in observance of a Federal holiday. Patent applications and other papers due in the USPTO, the Court of Appeals for the Federal Circuit and many U.S. District Courts on that day will be timely if filed on Wednesday, December 26.

USPTO Implements Pilot Program for Internal Cross-citing System November 1, 2018 

The USPTO is starting the pilot phase of the Access to Relevant Prior Art Initiative as of November 1, 2018.  During the pilot phase, electronic files for a group of patent applications will automatically receive references previously cited in their immediate U.S. parent application.  Examiners reviewing those applications will receive a list of the imported references using a new software tool.  The pilot will be conducted in art unit 2131 (i.e. computer memory applications) starting November 1, 2018, and will expand to eight other art units on January 1, 2019.  Applications included in the program will receive a Notice of Imported Citations listing all citations imported using the pilot system.

The USPTO will use feedback from the pilot phase to make any adjustments needed for implementing the system office-wide.  However, there are no plans at this time to lift applicants’ duty of disclosure, and the USPTO’s internal cross-citing will need to be verified by applicants.  Thus, at this point, Oliff will not be changing our practice or procedures.  At some point, the USPTO may also implement a system for automatically retrieving relevant documents from counterpart foreign applications.  If the USPTO continues to pursue the Access to Relevant Prior Art Initiative, it could significantly reduce the frequency of Information Disclosure Statement filings in the future.

Oliff PLC is closely monitoring this and other USPTO initiatives.  We will update our clients with any important information and changes as these programs progress.

For more information, please visit the USPTO’s official release: https://www.uspto.gov/patents-getting-started/access-prior-art-project

Holiday Closing (Thursday, November 22)

Oliff PLC and the USPTO will be closed on Thursday, November 22 in observance of a federal holiday.  Patent applications and other papers due in the USPTO, the Court of Appeals for the Federal Circuit and many U.S. District Courts on that day will be timely if filed on Friday, November 23.

Holiday Closing (Monday, November 12)

Oliff PLC and the USPTO will be closed on Monday, November 12 in observance of a federal holiday.  Patent applications and other papers due in the USPTO, the Court of Appeals for the Federal Circuit and many U.S. District Courts on that day will be timely if filed on Tuesday, November 13.

Holiday Closing

Oliff PLC and the USPTO will be closed on Monday, October 8 in observance of a federal holiday.  Patent applications and other papers due in the USPTO, the Court of Appeals for the Federal Circuit and many U.S. District Courts on that day will be timely if filed on Tuesday, October 9.

CELEBRATING 35 WONDERFUL YEARS

As Oliff PLC
Celebrates Its
35th Anniversary This Fall
We Thank Our Clients For Their Support
And Our Staff For Their Dedication
And Reflect On Past Achievements
While Looking Forward To The
Next 35 Years And Beyond