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…”

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Topics: MPEP 2100 - Patentability, MPEP 2106.07(A)(1) - Form Paragraphs For Use In Lack Of Subject Matter Eligibility Rejections, Patent Law, Patent Procedure
Tags: Abstract Ideas, Form Paragraphs, Patent Rejection, subject matter eligibility