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« Judge Newman's Suit Comes to an End | Main | Beteiro, LLC v. DraftKings, Inc. (Fed. Cir. 2024) »

July 16, 2024

Comments

"After a decade of such guidance, it is clear that the USPTO's example-based approach has failed."

While I completely agree that example-based guidance doesn't work in this space, the current guidance is not actually example-based. Rather, the examples are mere exceptions to a general test, with their only purpose being as vehicles applicants may use to demonstrate eligibility (in theory only, as you illustrated).

Iancu's much-lauded contribution to the eligibility analysis was to switch to a "buckets of abstraction" method that completely ignores what the claim is "directed to". Once any claim element is purportedly within a bucket, your entire claim is ineligible, unless you can demonstrate very narrow functional results (e.g., improvement to a computer).

Ultimately, I agree with your conclusions. It is time for the USPTO to actually do its job: issue guidance that is tailored to mitigate the concerns underpinning eligibility jurisprudence, and - as importantly - that can be applied by examiners consistently. It is actually not hard to do this (for instance, a real mental process test is actually very easy to administer). The problem, of course, is that such guidance would lead to far fewer 101 rejections and this is evidently considered unpalatable by USPTO decision makers.

Thank you for this very informative and enjoyable post

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