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TAKEAWAY: The updated examination guidance advises patent examiners that “the mere fact that something is disclosed in a piece of prior art…does not mean it was well-understood, routine, and conventional” and that such findings should be made only when those elements are shown on the written record to be “widely prevalent or in common use in the relevant industry.”

Yesterday, the USPTO released updated examination guidance that more favorably advises patent examiners regarding examination as it relates to patent eligibility under Section 101. In a memo to the examining corps, Deputy Commissioner for Patent Examination Policy, Robert Bahr, notably began by cautioning that “unless careful consideration is given to the particular contours of subject matter eligibility (35 U.S.C. § 101) it could ‘swallow all of patent law.'” The memo specifically interprets the Federal Circuit’s recent holding in Berkheimer v. HP Inc. regarding whether an additional element (or combination of additional elements) represents “well-understood, routine, conventional activity” under the PTO’s recent Section 101 analysis. See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). While Berkheimer involved mixed findings across all involved patent claims, the memo emphasizes to examiners one particular finding: that “storing a reconciled object structure in the archive without substantial redundancy,” (which the specification explains improves system operating efficiency and reduces storage costs), raised a factual inquiry that those “improvements were more than well-understood, routine, conventional activity previously known in the industry.”

Moreover, the memo reminds that “an examiner should conclude that an element (or combination of elements) represents 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.” (Emphasis in original). This memorandum clarifies that such a conclusion must be based upon a factual determination that is supported as discussed in Section III of the memo. The USPTO further clarifies that the analysis as to whether an element (or combination of elements) is widely prevalent or in common use is the same as the analysis under 35 U.S.C. § 112(a) as to whether an element is so well-known that it need not be described in detail in the patent specification. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.” Berkheimer, 881 F.3d at 1369.

The memo signals the USPTO’s long-awaited shift toward providing patent applicants with more “clear and predictable patent rights” under the leadership of newly-appointed USPTO Director Andrei Iancu, and even hints at issuing “further guidance in the future.”