USPTO Urged To Revise Interim §101 Guidance To Require Examiners To Present A Proper Prima Facie Case Supported By Factual Evidence

As previously reported, on December 15, 2014, the U.S. Patent and Trademark Office (USPTO) published a document titled "2014 Interim Guidance on Patent Subject Matter Eligibility" (Interim Guidance). This Interim Guidance was published as a notice for comments with the possibility of being revised, depending on public feedback.

On March 16, 2015, two of the largest and most influential IP bar organizations, the Intellectual Property Owners Association (IPO) and the American Intellectual Property Law Association (AIPLA), submitted comment letters.1 A key argument (among others) made by both organizations was the importance of requiring examiners to present a well-reasoned prima facie case of ineligibility, i.e., one supported by factual evidence. I believe this is an excellent suggestion. If adopted, it could go a long way toward easing applicants' burdens in dealing with the recent onslaught of rejections under §101.

It is now very common for practitioners working with software-related inventions to face rejections that consist of boilerplate language lacking specific evidence or analysis. Such rejections are extremely difficult to respond to and drive up the cost of prosecution. In my view, a view that appears to be shared by AIPLA and IPO, examiners should be instructed that conclusory assertions of ineligibility are insufficient, and that §101 rejections require careful analysis supported by factual evidence.

The following paragraphs summarize the main points made by AIPLA and IPO as related to rejections under the abstract idea exception. Both organizations address other exceptions, including natural laws and products of nature. The interested reader should consult the full letters for further details.

AIPLA

AIPLA generally said that the Interim Guidance does not adequately conform to Supreme Court and Federal Circuit case law, stressing that it falls short by describing a process that could encourage examiners to dissect claims, by not imposing a prima facie burden on examiner ineligibility determinations and by not requiring substantial evidence in support of those determinations.

According to AIPLA, it is essential that examiners be required to support a determination of abstract idea ineligibility and lack of inventive concept with factual support. The examiner should be required to produce substantial evidence in the form of a reference showing that the identified idea is fundamental or that the limitations included are...