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Start Preamble AGENCY: United States Patent and Trademark Office, Commerce. ACTION: Request for comments. SUMMARY: The U.S. Court of Appeals for the Federal Circuit (Federal Circuit) recently issued a decision regarding the inquiry of whether a claim limitation represents well-understood, routine, conventional activities (or elements) to a skilled artisan in the relevant field. Specifically, the Federal Circuit found that whether a claim element, or combination of elements, represents well-understood, routine, conventional activities to a skilled artisan in the relevant field is a question of fact. The United States Patent and Trademark Office (USPTO) has implemented this decision in a memorandum recently issued to the Patent Examining Corps (the Berkheimer memorandum).

The Berkheimer memorandum is available to the public on the USPTO's internet website. Examiners had been previously instructed to conclude that an element (or combination of elements) is well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry.

The Berkheimer memorandum now clarifies that such a conclusion must be based upon a factual determination that is supported as discussed in the memorandum. Aditionally the Berkheimer memorandum now also specifies that the analysis for determining whether an element (or combination of elements) is widely prevalent or in common use is the same as the analysis under (a) as to whether an element is so well-known that it need not be described in detail in the patent specification.

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The USPTO is now seeking public comment on its subject matter eligibility guidance, and particularly its guidance in the Berkheimer memorandum to the Patent Examining Corps. DATES: Comment Deadline Date: Written comments must be received on or before August 20, 2018.

ADDRESSES: Comments must be sent by electronic mail message over the internet addressed to:. Electronic comments submitted in plain text are preferred, but also may be submitted in ADOBE® portable document format or MICROSOFT WORD® format. Comments not submitted electronically should be submitted on paper in a format that facilitates convenient digital scanning into ADOBE® portable document format. The comments will be available for viewing via the USPTO's internet website ( ). Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments. Start Further Info FOR FURTHER INFORMATION CONTACT: Carolyn Kosowski, Senior Legal Advisor, at 571-272-7688 or Matthew Sked, Senior Legal Advisor, at 571-272-7627, both with the Office of Patent Legal Administration. End Further Info End Preamble Start Supplemental Information SUPPLEMENTARY INFORMATION: I.

Federal Circuit Decision in Berkheimer: The Federal Circuit recently issued a precedential decision holding that the question of whether certain claim limitations are well-understood, routine, conventional elements raised a disputed factual issue, which precluded summary judgment that all of the claims at issue were not patent eligible. See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Shortly thereafter, the Federal Circuit reaffirmed the Berkheimer standard in the context of a judgment on the pleadings and judgment as a matter of law. [] While summary judgment, judgment on the pleadings, and judgment as a matter of law standards in civil litigation are generally inapplicable during the patent examination process, these decisions inform the inquiry into whether an additional element (or combination of additional elements) represents well-understood, routine, conventional activity.

The USPTO has implemented this decision in the Berkheimer memorandum, which was recently issued to the Patent Examining Corps and is available to the public on the USPTO's internet website. The USPTO recognizes that unless careful consideration is given to the particular contours of subject matter eligibility (), it could “swallow all of patent law.” Alice Corp. CLS Bank International, 573 U.S. ___, ___, 134 S. 2347, 2352 (2014) (citing Mayo Collaborative Servs. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)).

The Berkheimer memorandum provides additional USPTO guidance that will further clarify how the USPTO is determining subject matter eligibility in accordance with prevailing jurisprudence. Specifically, the Berkheimer memorandum addresses the limited question of whether an additional element (or combination of additional elements) represents well-understood, routine, conventional activity. The USPTO is determined to continue its mission to provide clear and predictable patent rights in accordance with this rapidly evolving area of the law and, to that end, may issue further guidance in the future. Well-Understood, Routine, Conventional Activity: The USPTO's current understanding of the judicial framework distinguishing patents and applications that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible Start Printed Page 17537applications of those concepts—the Mayo-Alice framework—is set forth in section 2106 of the Manual of Patent Examining Procedure (MPEP). While the Berkheimer decision does not change the basic subject matter eligibility framework as set forth in MPEP § 2106, it does provide clarification as to the inquiry into whether an additional element (or combination of additional elements) represents well-understood, routine, conventional activity.

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