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PTO Releases Patent Eligibility Guidance Update

On October 18, 2019, in view of comments received, the US Patent and Trademark Office (PTO) issued an update to the 2019 Patent Eligibility Guidance (PEG), which became effective January 2019. The update is similar to the 2019 PEG in that the two-step test is used to determine subject matter eligibility. However, the update includes additional examples applying the subject matter eligibility test. The update also includes three appendices:

  • Appendix 1 provides four new examples that are illustrative of major themes from the comments.

  • Appendix 2 is a comprehensive index of examples, including examples issued prior to the 2019 PEG.

  • Appendix 3 lists and discusses selected Supreme Court and Federal Circuit patent eligibility cases.

The PTO grouped the comments into the following five major themes:

  • Evaluation of whether a claim recites a judicial exception at step 2A Prong One

  • Groupings of abstract ideas enumerated in the 2019 PEG

  • Evaluation of whether a judicial exception is integrated into a practical application at Step 2A Prong Two

  • Requirements of a prima facie case

  • Application of the 2019 PEG in the examining corps.

The update includes sections discussing each of these themes. The first section defines the term “recites” and provides guidance for examiners when determining whether a claim recites a judicial exception. The first section also explains that a claim can recite multiple distinct judicial exceptions (e.g., an abstract idea and a law of nature).

The second section further clarifies the terms “mathematical relationships,” “mathematical formulas or equations,” and “mathematical calculations.” It explains the meaning of “certain” in “certain methods of organizing human activity,” and “fundamental” in “fundamental economic practices or principles.” The second section also provides guidance on “commercial or legal interactions,” “managing personal behavior or relationships or interactions between people,” and “mental processes.” The update notes that claims that require a computer may still recite a mental process.

In the third section, the update includes a new mini-flowchart to depict the two-prong analysis that is performed in Step 2A of the eligibility flowchart illustrated in MPEP 2106(III). The third section provides further clarification on consideration of improving the functioning of a computer or other technology, and treatment or prophylaxis of a disease or medical condition. The update also explains that whether a claim limitation is well known, routine or conventional is a consideration under Step 2B.

In section four, the update details the analysis an examiner should provide in order to establish a prima facie case when making a subject matter eligibility rejection, and in section five discusses the PTO’s subject matter eligibility guidance materials and summarizes examiner training and applicant options for responding to a subject matter eligibility rejection.

The PTO appears to be dedicated to assisting applicants in claiming eligible subject matter within the confines of Supreme Court precedent. The PTO continues to welcome feedback on the 2019 PEG or any other patent eligibility issue.

© 2020 McDermott Will & Emery

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About this Author

Bernard P. Codd, McDermott WIll Emery Law Firm, Intellectual Property Attorney
Partner

Bernard P. Codd is a partner in the law firm of McDermott Will & Emery LLP and is based in the Washington, D.C., office.  He focuses his practice on patent prosecution and opinions in the areas of semiconductor device and manufacturing, battery, fuel cell, photolithography, chemical, metallurgy, and polymer technologies.

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