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concept of “preemption” in a subject matter eligibility analysis and further cautions Examiners regarding the use of non-precedential decisions inappropriately.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. Matt consults on nearly every one of Jones Day's over 290 PTAB cases to date. He currently serves as co-chair of Jones Day's PTAB practice.