V. Application Of The 2014 IEG In The Patent Examining Corps
Concern was expressed about application of the 2014 IEG in the patent examining corps, and suggestions were made as to the need for examiner training.
- The Office has already taken steps to enhance examiners’ understanding of the eligibility guidance, and will continue to work with examiners as part of its ongoing efforts to enhance patent quality.
- The following discussion notes efforts that have been made so far to provide examiners with appropriate guidance and training on the application of the 2014 IEG.
- It is also noted that many comments were received prior to completion of the first phase of eligibility training, and thus likely reflect rejections made prior to the issuance of the 2014 IEG and the examiner training.
Guidance Materials.
The Office’s eligibility guidance includes: the 2014 IEG; the 2014 Interim Eligibility Guidance Quick Reference Sheet (issued December 16, 2014), which is intended as a reference guide to the 2014 IEG; Examples: Nature‐Based Products (issued December 16, 2014); Examples: Abstract Ideas (issued on January 27, 2015); and the examples contained in Appendix 1 to this update.
- To assist examiners in understanding the principles discussed in the 2014 IEG and illustrated in the examples, Appendix 2 hereto is a comprehensive index of the examples, and Appendix 3 hereto provides a listing of eligibility case law precedent.
- The examples are intended to illustrate the proper application of the eligibility analysis to a variety of claims in multiple technologies, and to guide examiners in evaluating eligibility in a consistent manner across the corps.
Training.
The examining corps was trained on the 2014 IEG in January – February 2015, on the Examples: Nature‐Based Products in February – March 2015, and on the Examples: Abstract Ideas in April – May 2015. Training was conducted in a variety of modalities, including instructor‐led training, group discussion, and in workshop format.
- The training materials including video lectures, slides, and worksheets are posted on the Office website.
- The worksheets were designed for use in the workshop training, and are available for optional use by examiners to walk through the eligibility analysis of other claims.
- Sample “answer keys” for Examples 1‐8 demonstrate how the worksheets can be used to guide the analysis, and also provide examples of rejections that satisfy the prima facie burden of clearly articulating the reason(s) why a claimed invention is not eligible.
