AIPLA Comments to USPTO on Subject Matter Guidance
File Downloads
All documents are in PDF format.
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.
Upcoming Events
-
2024 Women in IP Law Global Networking Event
April 18, 2024
The annual Global Networking Event connects intellectual property practitioners from around the world for a day of networking, education, and creating meaningful connections. This year’s theme, Cultivating Leaders, is an opportunity for the AIPLA Women in IP Law Committee to help nurture and cultivate future leaders in the profession. -
World IP Day 2024
May 1, 2024 4:00 PM to 7:00 PM
Join AIPLA and partner organizations on May 1 in Washington, DC, for a special three-hour program to celebrate World Intellectual Property Day 2024. This annual international event is an opportunity to learn about the role that intellectual property (IP) rights play in encouraging innovation and creativity. The theme of this year’s celebration is “IP and the SDGs: Building Our Common Future With Innovation and Creativity.” -
2024 Advanced Chemical Patent Practice Institute
May 14 to 15, 2024
This advanced course offers how the chemical/pharma patent practitioners can use fundamentally sound but oft overlooked principles to prepare and prosecute a United States chemical/pharma patent application to withstand both PTAB and district court challenges. The principles taught will greatly help those advanced chemical/pharma patent practitioners involved with prelitigation, portfolio management, litigation, Orange Book listings, Purple Book/BCPIA, regulatory practice, due diligence, health checks, and analysis of third-party patents for validity/patentability, infringement, and enforceability issues, as well as for preparing IPR and/or PGR petitions and defending the patent against them. -
AIPLA 2024 Spring Meeting
May 16 to 18, 2024
Join us as we bring IP professionals together to learn and connect. More information coming soon! The 2024 Spring meeting will take place in downtown Austin, at the Hilton Austin. Leadership Meetings on Wednesday, May 15. Programming scheduled May 16-18.