US Patent & Trademark Office Issues New Subject Matter Eligibility (SME) Memo

Earlier this month, the USPTO issued a new Memorandum on Recent Subject Matter Eligibility Decisions from the U.S. Court of Appeals for the Federal Circuit (Federal Circuit). The Memorandum focuses on two recent Federal Circuit cases, namely McRO, Inc. (Fed. Cir. 2016) and BASCOM (Fed. Cir. 2016).

Notable takeaways from this Memo include:

a) From McRo; An “improvement in computer-related technology” is not limited to improvements in a computer or computer network per se, but can be claimed as a set of rules that improve the technology relating to computers. This argument can be supported by teachings in the specification about technological improvement, or a showing (again, preferably in the specification), that the claimed invention provides a particular solution to a particular problem.

b) From BASCOM; In evaluating whether claims recite “significantly more” than an abstract idea, examiners should consider additional elements in combination, as well as individually, to evaluate the claim as a whole.

c) Preemption; Generally, applicants should consider arguing the point of preemption wherever applicable in order to force the examiner to revisit the Step 2A/2B analysis from the USPTO’s SME guidance. If an applicant argues that a claim does not preempt all applications of an alleged judicial exception, the examiner has been instructed by this Memo to reconsider the Step 2A/2B analysis according to points (a) and (b) above from McRo and BASCOM.

The memorandum is available here:

https://www.uspto.gov/sites/default/files/documents/McRo-Bascom-Memo.pdf