USPTO Issues New Guidelines on Patentable Subject Matter

The USPTO recently issued new guidelines for patent examiners to use in determining whether a claimed invention meets the baseline criteria to be eligible for patent protection. Recent Supreme Court cases have significantly altered these criteria. Section 101 of the Patent Code says:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Supreme Court to Decide Standard of Review for Patent Claim Interpretation Rule

The Supreme Court on Monday granted a petition for review of the Federal Circuit's en banc decision upholding its practice of applying de novo review of patent claim construction decisions. Rule 52 states that "findings of fact ... must not be set aside unless clearly erroneous.” The petitioner stated the question on appeal as:

Whether a district court’s factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Federal Rule of Civil Procedure 52(a) requires.

I'll go out on a thick limb and predict that the Supreme Court will unanimously reverse the Federal Circuit and require some degree of deference to findings of fact in District Court decisions while still allowing de novo review of the legal conclusion. The only question is how the Court will attempt to draw a line between factual and legal conclusions in claim construction.

Supreme Court Preserves District Court Challenges to USPTO Decisions

In a recent decision, the Supreme Court unanimously decided that the ability of a patent applicant to present evidence to a District Court regarding a decision of the U.S. Patent and Trademark Office (USPTO) is limited only by the general rules regarding admissibility of evidence. The Court also ruled that a District Court should review USPTO decisions where new evidence is presented de novo. A contrary view was advanced by the USPTO.

Supreme Court to Decide if Isolated Human Genes Are Patentable

The U.S. Supreme Court recently granted review of a decision by the Court of Appeals for the Federal Circuit affirming that isolated human genes are eligible for patent protection. The Court granted review of a single question:

Are human genes patentable?

Claim Term Glossaries

Anyone involved with patent prosecution or enforcement knows that the most critical aspect of patent litigation is claim construction. In plain English, claim construction means deciding precisely what the words in the claims mean. Thus, defining claim terms is critical to patent litigators and must be given careful consideration by patent draftsmen. The Public Patent Foundation published three patent claim term glossaries by Dr. David Garrod, the Foundation's Senior Litigation Counsel, free of charge. They may be viewed or download (in Adobe .pdf format) here.

USPTO Proposes Increased Patent Fees

The USPTO released their proposed fee increases for the next fiscal year. Though most of the increases are moderate, there are some significant increases:

USPTO Announces Pilot for Responses After Final Rejection

The United States Patent & Trademark Office (USPTO) announced a new test program for handling applicant response filed after a final rejection. Under current law, an applicant does not have the right to amend a patent application, including the claims, after a final rejection. Under current practice, an amendment submitted after final rejection will not be entered unless the Examiner determines that the amendment puts all claims in condition for allowance or places the claims in better condition for appeal. Despite the fact that an amendment after final could be entered, the fact is that almost all such amendments are not entered with the most common reason being that the amendment cannot be examined without further searching. For that reason, an applicant wanting to amend an application in order to obtain allowance from the Examiner without the delay and expense of an appeal must file a Request for Continued Examination (RCE).