Comments on 2019 Revised Patent Subject Matter Eligibility Guidance
March 8, 2019
AIPLA applauds the Office for providing a valuable guide for determining patent eligibility and is grateful to the Office for providing what AIPLA believes is a better framework for analyzing subject matter eligibility than was provided by the multiple previous guidance documents. We also appreciate that the Office is providing public access to the examiner training materials as these provide a common framework for understanding how to apply the Guidance. AIPLA is also pleased that the Guidance applies to the PTAB as well as to the examination groups and believes that this will result in a more uniform handling of issues concerning patent-eligible subject matter. AIPLA notes that the Guidance provides a framework for analyzing patent eligibility based on a distillation of the current Supreme Court and Federal Circuit case law covering many different disciplines and, thus, the framework is necessarily imprecise.
AIPLA suggests that further guidance be included with respect to claims directed to diagnostic methods, as the current Guidance does not explicitly address such claims. If the USPTO did not intend to provide guidance for diagnostic method claims, we believe it will be helpful to affirmatively indicate that this January 7, 2019 Guidance does not apply to diagnostic methods.
Upcoming Events
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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.