While some requirements for patentability are common across the world, the actual nature of the requirements can diverge significantly between jurisdictions. One example is the European Patent Office’s strict approach to added subject matter compared to the different approach in taken in the United States. Recent changes on what is and is not patentable subject matter (“PSM”) in the United States have led to another point of divergence.
A U.S. Supreme Court case from 1980 stated that the legislature intended PSM to “include anything under the sun that is made by man.” However, the case also stressed that there were some judicial (judge-made) exceptions, namely laws of nature, physical phenomena, and abstract ideas. Newton’s law of gravity, sunlight, and risk management are examples of these judicial exceptions.
Recently, the Supreme Court has expanded the scope of the judicial exceptions and provided a test for PSM. These changes have caused a considerable upheaval in this previously-settled area of law. However, in response to a recent case from a lower court, the United States Patent and Trademark Office issued a memorandum to patent examiners may help applicants address PSM rejections.
As part of the PSM test, an examiner must consider whether a claim is directed to a judicial exception. If so, the examiner must then consider whether any additional claim recitations correspond with “well-understood, routine, conventional activity.” In our experience, examiners have asserted that a claim is directed to a judicial exception and have cited one or more references allegedly demonstrating that additional claim recitations correspond with “well-understood, routine, conventional activity.” Thus, examiners have rejected the claim as not reciting PSM. The memorandum may change this practice considerably.
The memorandum is quite clear that merely citing a reference is insufficient to establish that a claim recitation corresponds to a “well-understood, routine, conventional activity” described in the reference and that an examiner must instead perform a factual determination. At its core, the memorandum requires an examiner to consider whether the recited activity is so well-known that the patent application need not have described the activity in detail. One example given is of a doctoral thesis only available to the public at a German university: while the thesis may be prior art for novelty purposes, the thesis is unlikely to establish that a claim recitation corresponds with “well-understood, routine, conventional activity.”
We see this memorandum as a valuable development. While examiners may now establish that a claim recitation corresponds to “well-understood, routine, conventional activity” in a number of ways, the most likely way will be to cite a reference “that describes the state of the art and discusses what is well-known and in common use in the relevant industry.” As a practical matter, it may be difficult for an examiner to find a reference of such breadth. Additionally, inventors’ declarations may be helpful in disputing an examiner’s factual assertions as to what is “well-understood, routine, conventional activity.” Time will tell, but the memorandum may provide a helpful way out of a thick forest.