What are the form paragraphs used for lack of subject matter eligibility rejections?
The MPEP provides specific form paragraphs for rejections based on lack of subject matter eligibility:
- Form paragraphs 7.04.01, 7.05, and 7.05.01 are used for rejections at Step 1 of the eligibility analysis (failure to claim an invention within the statutory categories).
- Form paragraphs 7.04.01, 7.05, and 7.05.016 are used for rejections at Step 2B of the eligibility analysis (failure to claim patent-eligible subject matter due to lack of inventive concept/significantly more).
- For “tentative abstract ideas,” form paragraph 7.05.017 must be used in addition to the others, and requires the TC Director’s signature.
As stated in the MPEP: “Use form paragraphs 7.04.01, 7.05, and 7.05.01 for rejections based on a failure to claim an invention that falls within the statutory categories of invention… Use form paragraphs 7.04.01, 7.05, and 7.05.016 for rejections based on a failure to claim an invention that is directed to patent-eligible subject matter…”
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2106.07(A)(1) - Form Paragraphs For Use In Lack Of Subject Matter Eligibility Rejections,
Patent Law,
Patent Procedure