On April 19, 2018, the USPTO issued a Memorandum outlining a change in examination procedure regarding Subject Matter Eligibility under 35 U.S.C. § 101 based on the recently decided Federal Circuit case Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed.Cir. 2018). The new examination procedure clarifies the standard under which Examiners can find additional elements to be well-understood, routine, or conventional activity under the “significantly more” step of the Alice/Mayo test for patent eligible subject matter. In particular, a finding of what is well-understood, routine, or conventional activity must go beyond a finding of what was known in the prior art under a 35 U.S.C. §§ 102 and 103 analysis. The procedure provides specific examples of evidence Examiners must rely on to support a finding that additional claim elements are well-understood, routine or conventional. Click Here to review the Memorandum concerning the updates.
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