An Early Present for Patent Professionals: PTO Guidance on Patentability!

The Patent Office has released the much anticipated proposals for new rules applying the Supreme Court’s Alice decision. The new proposals expand considerably upon the initial guidance the Patent Office provided and attempt to grapple with the ironically abstract question of what kind of patent claims constitute an “abstract idea” or one of the other related exceptions to patentability the courts have carved out.

While the devil is always in the details of the application of rules—not to mention the public comment process and any amendments made before formal adoption—the Patent Office should be commended for trying to create some measure of predictability to the patentable subject matter determination. Plenty of grey areas remain, but at least entrepreneurs, inventors, and patent attorneys now have something more specific than the extraordinarily broad sweep of the Supreme Court’s decisions to consider in developing their patent strategies.

Of course, the Supreme Court ultimately can have the final say as to whether the Patent Office correctly draws the boundary between patentable subject matter and non-patentable abstract ideas, laws of nature, and natural phenomena. That is a topic for another day and the Supreme Court taking another patent case, though. For the moment, we have some new rule proposals to parse.