AIPLA Comments to USPTO on Subject Matter Guidance October 21, 2022

Arlington, VA. October 21, 2022 - The American Intellectual Property Law Association (AIPLA) submitted comments to the United States Patent and Trademark Office on the Office’s guidance on patent subject matter eligibility under Section 101 of the Patent Act. 

The response recommends maintaining the current guidance for the time being, but offers suggested improvements, including continuing to stress to examiners that the guidance be closely followed to ensure greater predictability, quality, and efficiency of patent examination.

Additionally, the response suggests that the guidance be updated to clarify how claims directed to functional improvements in various technological fields could integrate an abstract idea into a practical application, and that, for certain technologies, subject matter eligibility decisions are more unpredictable. With few judicial opinions on which to base examples for these technologies, AIPLA recommends the Office develop guidance in these technical areas. 

Finally, as there is sometimes reasonable disagreement between the applicant and examiner on how the claims should be interpreted with a rejection based on ineligibility, The response recommends providing additional guidance on claim interpretation in the context of a section 101 analysis, and that the Office should continue to emphasize that subject matter eligibility must be evaluated on a claim-by-claim basis. 

To view the complete comments, please download the comment letter posted to the right of this page.