USPTO Provides Update on Patent Subject Matter Eligibility

On October 17, 2019, the United States Patent and Trademark Office (USPTO) provided an update to its patent eligibility guidance. The update discusses and elaborates on the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) that was issued by the USPTO on January 7, 2019.

The update responds to public comments regarding the 2019 PEG. The update does not change the 2019 PEG, but rather provides further explanation on how the USPTO applies the 2019 PEG. The update provides discussion on the following five themes from the comments:

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. guidance and training provided to examiners on the application of the 2019 PEG.

The update also includes three appendices. The first provides new examples that are illustrative of major themes from the public comments. The second is a comprehensive index of examples for use with the 2019 PEG. The third lists and discusses selected eligibility cases from the US Supreme Court and the US Court of Appeals for the Federal Circuit.

The October 2019 Update materials are available to the public on the Subject Matter Eligibility page of the USPTO website here.

Summary By: Jae S. Morris