Washington, D.C. | May 8, 2016 – Sunjeev Sikand was quoted in the May 5, 2016 edition of IP Law360 regarding the impact of the U.S. Patent and Trademark Office’s May 2016 memo to examiners, following up on guidance it issued in July 2015 on applying Alice in Patent Act Section 101 rejections.
In the article titled USPTO Calls for Clearer Alice Rejections, Aiding Applicants, Mr. Sikand states: “This memo is definitely a bit of a crackdown on the examining corps by saying that there does need to be a more detailed explanation.”
It is important that the memo instructs examiners not to go beyond recent decisions by the Supreme Court and Federal Circuit invalidating patents on subject-matter eligibility grounds since there is only a limited body of case law, and new applications necessarily are different from what has come before, Sikand said.
Sikand expects examiners to continue issuing initial rejections in largely the same way following the memo, but “where the rubber hits the road is evaluating the applicant’s response.” It is helpful for applicants to see that the office is advising examiners to reconsider their positions based on the response or better justify their rejection by citing case law, he said.
Whatever happens going forward, the memo’s emphasis on clarity and following case law should be helpful to applicants, Sikand said.
Mr. Sikand has authored numerous articles in IP Law360 and Intellectual Property Today relating to the Alice decision and patent eligibility under Section 101.
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