Patent eligibility guidelines are detailed in the Federal Register Notice, which was released on April 20, 2018. The United States Patent and Trademark Office issued a memo to the Examining Corps, offering guidance under Berkheimer, a Federal Circuit decision addressing patent eligibility guidelines. It was decided that patent eligibility would be met if the invention was conventional, routine, and well-understood.

The Berkheimer Decision

In the Berkheimer Decision, the Federal Circuit court reiterated the truth of the second step from the Alice/Mayo patent eligibility analysis. The questions surrounding a claim element that was once considered conventional, routine, and well-understood to a skilled artisan are now a question of fact. A fact, such as this one, that is relevant to the invalidity conclusion needs to be proven by clear and convincing evidence.

The court confirmed that not every § 101 determination contains actual disputes regarding the facts related to the inquiry. However, when it does, summary judgment is not appropriate. The court also highlighted the existing principles, stating that just because something was disclosed in the prior piece of art doesn't mean it was conventional, routine, and well-understood.

Since the patent specifications at hand were addressing detailed descriptions of features outlined in certain claims, the court went ahead and vacated the lack of eligibility findings related to those claims.

Neither the Federal Circuit Court nor the memorandum alters the requirements for patent eligibility. Instead, they hone in on the type of evidence needed to establish ineligibility under the second step of the Alice/Mayo analysis.

Patent Eligibility Examination Guidance

The Berkheimer memorandum formulates a rejection for lack of subject matter eligibility. These revisions establish that a new element remains unconventional, non-routine, or not well-understood unless the examiner supports a rejection in writing with at least one of the following:

  1. A citation on a statement written in the application during prosecution, demonstrating the conventional, routine, or well-understood nature of the new elements.
  2. A citation on one or more court decisions, demonstrating the conventional, routine, and well-understood nature of the new elements.
  3. A citation on a publication that verifies the conventional, routine, and well-understood nature of the new elements.
  4. A statement indicating the examiner is making an official notice regarding the conventional, routine, and well-understood nature of the additional elements.

Regarding option number one, the Federal Register's Notice offers additional guidance. Something is conventional, routine, and well-understood when it is a commercially available product or exists in a manner that demonstrates the new elements are so well-known, the details of the new elements will satisfy code, specifically 35 U.S.C. 112(a). The new elements cannot be deemed conventional, routine, or well-understood simply based on the fact that the specifications were not outlined for the new elements.

As for option number four, an official notice should only be created when the examiner is certain that the new elements are conventional, routine, and well-understood by those in the related art. Meaning, the new elements must be very common in the related field, compared to the activities or elements that are well-known enough not to warrant a patent application that will meet the demands of 35 U.S.C. 112(a).

If an applicant feels the need to challenge these assertions, the examiner has to submit evidence that abides by options one through three, otherwise known as an affidavit under 37 CFR 1.104(d) (2). The evidence will have to attach specific and factual statements that support the claim.

The Berkheimer Guidance

The Berkheimer Federal Circuit Court and the 2018 memorandum clearly state that, whether or not a feature is outlined in the specifications will not settle whether the feature in question is conventional, routine, or well-understood. Rather, the Berkheimer decision makes it clear that patent owners can prevent summary judgments if they provide detailed descriptions of the features that may fall under step two of the Alice/Mayo analysis.

The trouble is, inventors may not consider certain features a primary component of their invention. If certain features include a natural product, phenomenon, or abstract idea into certain applications of the invention and are not considered conventional, routine, and well-understood, the Berkheimer guidance will provide more of an incentive to detail the features in the specification.

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