At the Intersection of Technology, Law, and Business
January 08, 2019 - Intellectual Property, Software

A New Year's Gift for Patent Applicants?

Supreme Court Restricts the Extraterritorial Reach of U.S. Patent Law for Exported Goods

The USPTO rang in the new year by releasing new Examiner Guidance that could potentially benefit patent applicants who have previously encountered difficulty acquiring patents under the Office’s procedures for determining patent subject matter eligibility under 35 U.S.C. § 101. Supreme Court decisions regarding § 101 from 2012 to 2014 have made patents related to software and certain biotechnology related subject matter more difficult to obtain. As detailed below, the new guidance seems to indicate a major shift in how the USPTO will examine patent applications under § 101. This shift appears to swing the pendulum back toward patent holders by allowing many more applications to meet the patentability requirements of § 101.