Probably not the language your parents warned you about, but certain trigger words may land your patent claims in hot water.

On April 19, 2018, the USPTO issued a memorandum on examination procedure following the Federal Circuit’s decision in Berkheimer v. HP Inc., 881F.3d1360 (Fed. Cir. 2018).

The Berkheimer case examined the second part of the determination as to whether a claim satisfies the subject matter eligibility threshold, namely if the claim adds something more than a routine step to an abstract idea or natural phenomenon.  On this question, if the additional element is simply a routine technique, the claim doesn’t typically pass muster as patent eligible.

The Court instructed that “whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” It further held that “The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.”

The USPTO’s memo following the case takes these directives and instructs its patent examination corps in the types of evidence which can substantiate a finding that claim elements are in the well-understood, routine and conventional:

  • Express statements in the specification or by the applicant during the prosecution as to the routine nature of the component or step;
  • a court decision finding the element well-understood by those in the art (see MPEP § 2106.05(d)(II));
  • a publication that discusses the state of the field at the time the patent was filed such as book or review article.

These sources can come straight from the horse’s mouth, i.e. the inventor.  Many patent applications have long background sections which may include admissions about the state of the art.  It is not uncommon for the specification to incorporate parts or all of a pending manuscript.  While, on one hand, this may be an expedient manner to assure everything planned for publication is first included in the patent application, on the other hand, such unscrutinized inclusions may doom patent claims down the road. Research publications may characterize methods, techniques and modifications as established in the field.

Some trigger words to watch for:

routine, conventional, well-known, well understood, widely known, widely used, established / well established, common / commonly used, standard

The current examination guidelines look for inventor admissions in the patent application and prosecution documents submitted by the applicant.  It would seem too that an inventor’s admissions in other contexts, particularly appearing in published research articles and presentations, could be just as troublesome.

A few hypothetical examples:

You want to patent an app that identifies patients as risk for schizophrenia using a series of tests. Your recent review article notes that there is a battery of well-known tests used for this diagnosis.

You have a claim for a machine learning-based approach to categorize genomes from diverse organisms into related subsets.  Your published article declares that your approach is inspired by a well-known molecular biology technique.

You claim a method of detecting microorganisms from clinical samples.  One of your articles states in the abstract that detection and identification of the bacterial material has been a routine analysis for the past 5 years.

Can you rid yourself of all of these admissions?  It’s a balancing act.

One of the requirements for a patent application is enablement. The application must teach how to make and use the invention.  The application, however, need not detail methods that are well-known, which is expedient in keeping the application from becoming an enormous treatise on techniques. Yet this principle would seem at odds with the avoidance of admissions as to the routine nature of research.

There is a happy medium.  The Berkheimer case and the USPTO guidelines recognize that “[t]he mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.”  This suggests that if a single reference explains a technique but does not characterize it as commonly used in the industry, it is unlikely to be the type of art the USPTO may use to establish the routine nature of an element.

With this in mind, you can select a publication for citing that details the method of interest but doesn’t make any broad statements about the conventional character of the technique.  Also consider explaining why applying the method to your particular problem would not be the routine solution. As in many areas of patent strategy, it can be key to distinguish your innovation from others in the field. Here, not only the facts, but the language you choose to characterize your invention and the field in which it sits can be crucial.


The content of this blog is for informational purposes only and does not offer legal advice. Circumstances are fact-specific and you should consult an attorney for legal advice concerning your individual issues.