On November 2nd, the USPTO issued new guidance to Patent Examiners regarding § 101 subject matter eligibility. The memorandum provides guidance based on Federal Circuit decisions issued since the Office’s most recent, May 2016, update. The four page letter includes guidance based on the Federal Circuit’s recent decisions in McRO, Inc. v. Bandai Namco Games, and BASCOM Global Internet v. AT&T Mobility decisions.

The memo includes discussion of the concept of “preemption” in a subject matter eligibility analysis and further cautions Examiners regarding the use of non-precedential decisions inappropriately.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.

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