Buzz in the industry suggests that the United States Patent and Trademark Office (USPTO) will be doing away with the 12 factor test.

In a welcome move, the buzz coming from the USPTO say that in the new “guidelines,” expected to be issued any time in the near future, will abandon the subjective “12 factors” for deciding claims patentability under 35 U.S.C. 101. One of the biggest problems with the 12 factors was that different people interpret them very differently.

What’s more, the factors are regarded by many in the patent community as being arbitrary, as is their application. It is hoped that the USPTO did recognize the challenge of operating under the 12 factors as unnecessarily cumbersome and extremely subjective.

In the meantime, everything is on hold. The only thing I can advise is to wait and see what comes next because we do not know if the now rejected claims will still be rejected under the new “guidelines.”

Silvia Salvadori, PhD.
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silvia@salvadorilaw.com
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