In Berkheimer v. HP, Inc., the Federal Circuit clarified step two of the U.S. Supreme Court's Alice test for patent eligibility under 35 U.S.C. § 101. It noted that Mayo requires consideration of the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent eligible application. It noted that will be satisfied when the claim involves more than performance of well understood, routine, and conventional activities previously known to the industry.
Moreover, the Federal Circuit stated the question of 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 and must be proven by clear and convincing evidence.
Note this decision is an important case in determination of patent eligibility under 35 U.S.C. § 101, because it gives patent applicants and patent owners a means to push back on purely subjective opinion that a claim lacks an "inventive concept."
See also the USPTO Memo Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.).
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