Subject Matter Eligibility Supplement:
8. Subject Matter Eligibility: Workshop II Handout
Official PDF » | 7 pgs; Subject Matter Eligibility worksheet. |
8. Subject Matter Eligibility: Workshop II Handout
PDF supplement 8 covers a workshop on subject matter eligibility. The way the USPTO has these PDF's thrown together for you is not very helpful, especially for this particular supplement (8) and supplements 9 - 12.
Supplement 8 serves as an introduction to the workshop. This workshop helped walk USPTO staff through determining subject matter eligibility by giving 4 specific examples. Supplement 8 covers the 4 example claims and provides background on the inventions.
The first two example claims are based on the same invention which is called Example 21. The first example claim is called Claim 1. The second example claim is called Amended Claim 1 or sometimes Claim 2 in Example 21.
The second set of example claims are based on a different invention which is called Example 23. The first example claim is called Claim 3. The second example claim is called Newly Added Claim 4 (or Claim 4 in Example 23).
PDF supplement 8 only provides the background along with the claims and introductory information on the workshop. The four remaining supplements (9 - 12) cover the examples in detail.
Here is a table summarizing the 4 examples with the PDF they correspond to:
9. SME: Worksheet, Example 21, Claim 1 | Example 21, Claim 1 |
10. SME: Worksheet, Example 21, Claim 2 | Example 21, Amended Claim 1 (or Claim 2 in Example 21) |
11. SME: Worksheet, Example 21, Claim 3 | Example 23, Claim 3 |
12. SME: Worksheet, Example 21, Claim 4 | Example 23, New Claim 4 (or Claim 4 in Example 23) |
Please note that Supplements 11 and 12 appear to be mislabelled by the USPTO. They should be updated to read the following:
- 11. Subject Matter Eligibility: Worksheet, Example 23, Claim 3
- 12. Subject Matter Eligibility: Worksheet, Example 23, Claim 4
We have left them labelled as is by the USPTO since these are the titles you will likely see on the day of the exam.
This workshop training will demonstrate the application of several key aspects of the July 2015 Update: Subject Matter Eligibility (July 2015 Update).
- This workshop training will walk through the analysis of a select group of claims from the published examples found in the July 2015 Update Appendix 1: Examples (July 2015 Update Appendix 1: Examples) using the Subject Matter Eligibility Worksheet (Subject Matter Eligibility Worksheet - Abstract Idea Workshop).
- The examples should be analyzed under the 2014 Interim Guidance on Patent Subject Matter Eligiblity (IEG).
- As the examples are intended to be illustrative only, they should be interpreted based on the fact patterns set forth below.
- Other fact patterns may have different eligibility outcomes.
- For purposes of this workshop, other patentability requirements under §§ 102, 103, 112 and 101 (utility, inventorship, double patenting) and non-statutory double patenting need not be addressed.