The United States Patent and Trademark Office (USPTO) updated the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) promulgated in January. This update (10-2019 PEG Update) provides yet further explanation and clarity on how the USPTO analyzes subject matter eligibility. Notably, the 10-2019 PEG Update does not change the 2019 PEG.
The 10-2019 PEG Update discusses how the USPTO determines if a claim “recites” an abstract idea, how groupings within the abstract idea exception are determined, what procedures examiners can use to identify “tentative abstract ideas”, how examiners evaluate whether a judicial exception is integrated into a practical application, and how it is the examiner’s responsibility to provide adequate notice to applicants when making a subject matter eligibility rejection.
As with prior updates, the 10-2019 PEG Update includes several helpful examples and an updated case law charts of select eligibility cases from the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit.