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Boston Patent Law Association Response to USPTO Request for Comments on Changes in Examination Procedure Pertaining to Subject Matter Eligibility

Jonathan Roses co-authored on behalf of the Boston Patent Law Association's (BPLA’s) Patent Office Practice Committee an August 2018 Response to USPTO Request for Comments on changes in examination procedure pertaining to subject matter eligibility. The Response expressed support for the framework for assessing compliance with subject matter eligibility requirements detailed in USPTO’s guidance based on the In re Berkheimer decision, advocated for additional emphasis on the requirement for examiners to consider the claim as a whole in that analysis, and emphasized the proper procedures for establishing that a claim element is well-understood, or conventional.