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24 December 2019PatentsRyan N Phelan

What’s in the USPTO’s 2019 Subject Matter Eligibility Guidance update?

In mid-October 2019, the United States Patent and Trademark Office (USPTO) updated its patent eligibility guidance (PEG) published in January 2019. The update does not change the guidance, but simply offers clarifications invited by public responses to the January guidance.

On October 17, 2019, the USPTO issued a 22-page update (October PEG Update) to its 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG).

The 2019 PEG, originally released on January 7, 2019, marked a shift in US Patent Office’s review process, generally leading to increased allowance of patent applications facing scrutiny under 35 USC § 101 (subject matter eligibility) in view of the US Supreme Court’s decision in Alice Corp Pty Ltd v CLS Bank Int 'l, 573 US 208, 215-17 (2014) (Alice). The October PEG Update does not change the 2019 PEG. Instead, it provides additional clarification as to its application and scope.

The USPTO provided the October PEG Update in response to public comments to its 2019 PEG. The 2019 PEG changed the procedure by which examiners are to assess patent eligibility. Specifically, the 2019 PEG split step 2A of the USPTO’s subject matter eligibility analysis into two prongs (‘Prong One’ and ‘Prong Two’). The Step 2A analysis determines whether a given invention is “directed to” a patent ineligible abstract idea. An overview of the 2019 PEG, including a description of how the USPTO now analyses claims for subject matter eligibility under the Patent Office’s newly revised step 2A, may be found in our previous postings here and here.

The October PEG Update clarifies the following five aspects of the 2019 PEG analysis:

  1. Evaluating whether a claim “recites” a judicial exception;
  2. The groupings of abstract ideas enumerated in the 2019 PEG;
  3. Evaluating whether a judicial exception is integrated into a practical application;
  4. The prima facie case and the role of evidence with respect to eligibility rejections; and
  5. The application of the 2019 PEG in the patent examining corps.

The below sections provide highlights of each aspect.

(1) Evaluating whether a claim “recites” a judicial exception

Under Step 2A Prong One of the 2019 PEG, an examiner is required to determine whether a claim “recites” a judicial exception (ie, an abstract idea, a law of nature, or a natural phenomenon). The October PEG Update clarifies that a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” within the claim. The October PEG Update provided two examples as to the meaning of these terms:

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