Washington, D.C., partner and co-chair of the IP group, Bob Stoll, testified during a hearing at the United States Patent and Trademark Office (USPTO) on November 14, 2016. Bob spoke about issues relating to the examiner guidelines for handling patent subject matter eligibility under 35 USC 101.
Bob urged the USPTO to apply the Supreme Court decisions on new fact patterns narrowly as stated in the decisions themselves. He said the office should be focusing on clarity, written description, enablement and obviousness. Bob also urged the office to provide more examples to guide the examiners and the public so that claims can be written in a manner that they could survive a 101 analysis. Bob also pointed out that with several Federal Circuit cases now finding claims that pass 101 muster, the USPTO should be able to provide more examples that interpolate the Federal Circuit decision instead of waiting for every fact situation to be heard.