By: Robert R. Sachs
On January 21, 2015 I gave a short presentation on the USPTO's Intermin Guidance. I focused on the issues and concerns that were raised by a significant portion of the comments submitted in response to the Preliminary "Alice" Guidance that came out a week after the Alice decision. In particular, I noted that the Intermin Guidance did not address four key issues:
1) the need for substantial evidence on the record to support a Section Rejection.
2) the importance of preemption in the Step 2B analysis.
3) the need for examples of both eligible and inelible software claims.
4) the meaning of "abstract ideas" as being specifically fundamental building blocks.
A video of the presentation is available at Subject Matter Eligibility Forum. My presentation starts around 51:30.
I recommend Bob Stoll's presentation, which is the very first on this video. I also recommend the presentation by Thomas Isaacson. He presents a number of specific solutions to the various problems I've detailed. His presentation starts around 33:25.