abstract ideas

USPTO DIRECTOR IANCU TAKES ON THE SUPREME COURT ON THE ISSUE OF PATENTABLE SUBJECT MATTER

On September 24, 2018, at the 46th Annual Meeting of the Intellectual Property Owners Association, Andrei Iancu, Director of the United States Patent and Trademark Office (“USPTO”), announced that the USPTO is considering “revised guidance” on what is patentable subject matter under Section 101 of the Patent Act.[1]  In an earlier blog post, I discussed new USPTO guidance involving the possible presence of contested issues of fact in determining whether an invention was “routine, conventional and well-understood.”  However, in his September remarks, Director Iancu reveals that the USPTO is considering going much further to take on directly the issue of what it means for a claim to be “directed to” unpatentable subject matter, such as an abstract idea, and how such a claim may be nonetheless patentable.  The new guidance would place the USPTO in front of, and possibly in conflict with, the U.S. Federal Circuit Court of Appeals and the U.S. Supreme Court on how to deal with patentability issues involving abstract ideas or other judicially-created exceptions to patentability.