Comments Due on §101 Patent Eligibility Guidance


Back in July 2022, the new Director of the USPTO, Kathi Vidal, announced that the USPTO would be seeking comments on its anticipated guidance on §101 patent-eligibility. The deadline for those comments is rapidly approaching on September 15, 2022. The announcement was made against the backdrop of the USPTO’s release of a report to Congress related to §101 eligibility earlier in the year, as well as deployment of the new Deferred Subject Matter Eligibility Response (DESMER) pilot program, which was a result of a joint letter from Senators Thom Tillis (R-NC) and Tom Cotton (R-AR) on the impact on patent prosecution as a result of perceived unnecessary applicant responses to §101 rejections in Office Actions.

Further to the above actions, Director Vidal announced on August 31, 2022, a call for collaboration with stakeholders, presumably practitioners and applicants, for clarity and guidance on §101 patent subject matter-eligibility. This is a welcome beginning especially for practitioners given the analytical landlines many practitioners have faced when dealing with a §101 patent subject matter-eligibility rejection in an Office Action.

More information on further initiatives from the USPTO is forthcoming. Of course, we will update the blog accordingly.