The United States Patent and Trademark Office has again updated the Patent Eligibility Guidance directed to Office personnel, specifying how patent claims are to be treated under 35 U.S.C §101. The newest update follows the January 2019 update and continues an unofficial trend of the USPTO issuing annual or biannual updates dating back to 2014. The guidance and the accompanying material are available at the USPTO’s Eligibility Guidance website here.
The October 2019 Guidance provides four new exemplary cases with detailed analysis. The examples are directed to the life sciences and data processing technical field. In addition, the Guidance provides further details on the following aspects of §101 rejections:
(I) evaluating whether a claim recites a judicial exception;
(II) the groupings of abstract ideas enumerated in the 2019 PEG;
(III) evaluating whether a judicial exception is integrated into a practical application;
(IV) the prima facie case and the role of evidence with respect to eligibility rejections; and
(V) the application of the 2019 PEG in the patent examining corps.
Based on our initial review of the updated Guidance, it appears that the issue of patent eligibility in the U.S. is moving towards increased clarity. However, it should be kept in mind that legislation or new precedential court cases may change the situation in the coming months. We are currently digesting the new guidance within the US team at LAINE Intellectual Property and will present a synopsis of the Guidance within the upcoming weeks – stay tuned!