In an article published in World Intellectual Property Review on December 24, Ryan Phelan discusses the U.S. Patent and Trademark Office's (USPTO) 22-page Update (October PEG Update) to its 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG).
The October PEG Update provides clarification for five aspects of the 2019 PEG including evaluating whether a claim "recites" a judicial exception and evaluating whether a judicial exception is integrated into a practical application, among others.
"Under Step 2A Prong One of the 2019 PEG, an examiner is required to determine whether a claim "recites" a judicial exception (i.e., 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," Phelan explains. Thus, if a judicial exception is "described" in a claim it would have broader implication than one that is "set forth."
In addition to the five clarifications, the update also established four new examples that demonstrate the application of the 2019 PEG to hypothetical inventions such as patent eligible and patent in-eligible claims reciting various technologies.
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Originally Published by World Intellectual Property Review
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