Recent Examiner Training

Greg VidovichDirector, Technology Center 3600

October 21st, 2015

Recent Examiner Training• 35 U.S.C. 101 Overview• 112 U.S.C. 112 Overview• Claim Interpretation

General examination guidance and training materials:http://www.uspto.gov/patent/laws-and-

regulations/examination-policy/examination-guidance-and-training-materials

101 Overview• Interim Eligibility Guidance• Update to the Interim Eligibility Guidance• Examples• Next Steps

Interim Eligibility Guidance (IEG)December 16, 2014

• Explains the USPTO’s interpretation of subject matter eligibility requirements in view of Alice Corp., Myriad, Mayo, etc.

• Addresses common themes from the feedback to the extent allowed by controlling case law

• Reflects significant changes from the March 2014 Guidance• Effects on prior guidance:

– Supplements the June 25, 2014 Preliminary Instructions– Supersedes the March 2014 Guidance

Feedback: Common ThemesSix themes emerged from the public comments on the IEG:

1. Request for additional examples2. Further explanation of the Markedly Different Characteristics analysis3. Identifying abstract ideas4. Making a prima facie case and the role of evidence5. Application of guidance in the examining corps6. The role of preemption and streamlined analysis

July 2015 UpdateJuly 30, 2015

• Provides clarifications on the IEG and responds to feedback

• Provides additional abstract idea examples based on cases and hypotheticals (Appendix 1)

• Provides an index of examples by abstract idea and “significantly more” treatment (Appendix 2)

• Includes an updated case law chart cross-referencing cases to discussions of cases in the IEG, examples, and Update (Appendix 3)

GUIDANCE OVERVIEWRecent Examiner Training

Eligibility Analysis

Examiners are to:• Use the broadest reasonable

interpretation (BRI) of the claim

• Analyze eligibility based on the claim as a whole

• Practice compact prosecution

Examples• Several sets of examples have been developed

to illustrate the application of the IEG– Show eligible and ineligible claims, in accordance with case

law and based on hypothetical fact patterns

– Nature-based products (December 2014)

– Abstract ideas (January 2015)

– Streamlined analysis (CBT posted March 2015)

– Abstract ideas & streamlined analysis (July 2015)

July 2015 Update: Examples

• Illustrate significantly more (Step 2B) analysis:– Example 21 (business

method)

– Examples 22 & 23 (GUI)

– Example 24 (Flook: updating alarm limits)

– Example 25 (Diehr: rubber manufacturing)

• Illustrate streamlined analysis:– Example 26 (internal

combustion engine)– Example 27 (software)

• Illustrate claims that are not directed to an exception:– Example 23 (GUI)– Example 27 (software)

Applying Guidance @ USPTO

• July 2015 Update is part of comprehensive & on-going approach to enhancing examiner understanding of eligibility– Guidance documents discussing legal principles (e.g., IEG, July 2015

Update, Quick Reference Sheets)– Examples illustrating application of legal principles– Indices to assist in locating most pertinent examples and case law

precedent

• Two-phase training of examining corps– Included training on IEG (Phase 1) and examples (Phase 2)– Multiple modalities (e.g., lectures, group discussion, workshops)

NEXT STEPSRecent Examiner Training

Continued Public Engagement• Developing guidance is an ongoing process

• Updates will be provided based on feedback from the public and the examining corps– Public comment period open until Oct. 28, 2015

– Comments may be submitted to: 2014_interim_guidance@uspto.gov

• Additional biotech examples are being developed

Monitor Judicial Developments• Federal Circuit decisions relating to subject matter

eligibility may continue to fill in gaps– Sequenom (June 2015) – petition for en banc rehearing

pending– Versata (July 2015) – petition for en banc rehearing pending

Additional Resources

• General examination guidance and training materialshttp://www.uspto.gov/patent/laws-and-regulations/examination-

policy/examination-guidance-and-training-materials

• Interim Eligibility Guidancehttp://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-

interim-guidance-subject-matter-eligibility-0

• Includes guidance documents, example sets, training materials, and relevant case law

• Includes links to public comments

• Any updates will be posted to this page

112 Overview

• Examining Claims for Compliance with 35 with 35 USC 112(a):

Overview and Part I - Written Description = Focus on Electrical/Mechanical and Computer/Software - related Claims

Computer Based Training (CBT) [posted 8/17/2015]PowerPoint of the CBT [posted 8/17/2015]Written Description Workshop [Coming Soon]

112 Overview

• Examining Claims for Compliance with 35 with 35 U.S.C. 112(a):

Part II - Enablement = Focus on Electrical/Mechanical and Computer/Software-related Claims

Computer Based Training (CBT) [posted TBD]

PowerPoint of the CBT [posted 10/7/2015]

112 Overview• 35 USC 112(f): Identifying Limitations That Invoke 112(f)

Computer Based Training [CBT] [posted August 2, 2013]PowerPoint of the CBT [PPT] [posted August 2, 2013]Handout [PDF] [posted August 2, 2013]

112 Overview• 35 USC 112(f): Making the Record Clear

Computer Based Training [CBT] [posted August 2, 2013]PowerPoint of the CBT [PPT] [posted August 2, 2013]Handout [PDF] [posted August 2, 2013]

112 Overview• 35 USC 112(f): Broadest Reasonable Interpretation and

Definiteness of § 112(f) LimitationsComputer Based Training [CBT] [posted May 5, 2014] PowerPoint of the CBT [PPT] [posted May 5, 2014]

• 35 USC 112(f): Evaluating § 112(f) Limitations in Software-Related Claims for Definiteness under 35 USC 112(b) Computer Based Training [CBT] [posted June 20, 2014 PowerPoint of the CBT [PPT] [posted June 5, 2014]

112 Overview• The public is invited to submit comments on the training

to: TrainingComments112f@uspto.gov

Claim Interpretation• Examining Functional Claim Limitations: Focus on

Computer/Software-related ClaimsComputer Based Training [CBT] [posted June 30, 2015]PowerPoint of the CBT [PPT] [posted June 30, 2015]

• Broadest Reasonable Interpretation (BRI) and the Plain Meaning of Claim Terms Computer Based Training [CBT] [posted March 3, 2015]PowerPoint of the CBT [PPT] [posted March 3, 2015]

Additional Resources• General examination guidance and training materials

http://www.uspto.gov/patent/laws-and-regulations/examination-policy/examination-guidance-and-

training-materials