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Expert Analysis

5 Observations On USPTO's Updated 101 Guidelines

Law360, New York (August 3, 2015, 5:45 PM EDT) -- On July 30, 2015, the U.S. Patent and Trademark Office issued an update to its interim guidelines on subject matter eligibility (a.k.a., § 101). While substantive procedure remains unchanged, the PTO's "additional guidance" gives more leeway to examiners, makes it more difficult for practitioners to challenge §101 rejections, and provides examples to help both sides argue their cases. The update briefly discusses the "markedly different characteristics" analysis related to laws of nature and naturally occurring subject matter, but notes that those examples are forthcoming. The bulk of the update instead focuses on the "abstract idea" judicial exception....

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