Beyond Dejardins – The USPTO’s Further Guidance on Subject Matter Eligibility

“Eligibility determinations can be difficult.” That’s what USPTO Director John Squires sagely wrote in a recent memorandum to the examining corps. In the memorandum, and a companion memorandum addressed to patent applicants and practitioners, Director Squires built on his September decision in Ex parte Desjardins, which I discussed here.

The new memoranda encourage applicants to file evidentiary declarations regarding various subject matter eligibility rejections, addressing any of a variety of situations involving the Step 2 of the USPTO eligibility framework (which was set forth in the flow charts referred to in this earlier piece). Such evidentiary declarations are submitted pursuant to Rule 132 (37 CFR 1.132), and may be made by any declarant with knowledge of the facts being asserted. Evidentiary declarations regarding subject matter eligibility should preferably be separate from declarations regarding other issues, such as rejections on other grounds.

The memorandum to the examining corps provides examples of situations using evidentiary declarations

1) to explain that an alleged mental process cannot practically be performed by the human mind;

2) to show that an invention provides an improvement to functioning of a computer or computer-related system;

3) to point out that additional claim elements have more than a nominal relationship to a judicial exception (and therefore limits an abstract mental process set forth in other claim element(s)); and

4) to establish that a claimed combination amounts to the requisite “significantly more” than the judicial exception (as set forth in USPTO Step 2B).

The memorandum indicates that such declarations, while they may be useful, are not required to overcome a subject matter eligibility rejection. The memorandum cautions that such declarations cannot be used to make up for deficiencies in the application as filed, and while they should be given due considerations by examiners, their submission is not necessarily sufficient to overcome a rejection.

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