The 2019 USPTO revised patent subject matter eligibility guidance (2019 PEG, now in MPEP 2106) helped clarify “Alice” patent eligibility issues.
In 2019, former USPTO director Andrei Iancu tried to clean up the “Alice” 35 USC 101 patent eligibility mess. On January 7, 2019, the USPTO issued the “2019 Revised Patent Subject Matter Eligibility Guidance.” This is often called the “2019 PEG.” Although not perfect, 2019 guidance helped to reduce the number of semi-random 35 USC 101 rejections. You can see some excerpts below.
Properly applying the Alice/Mayo test in a consistent manner has proven to be difficult.
The guidance points out that the Alice/Mao test has not worked. The Federal Circuit has now issued numerous decisions identifying subject matter as abstract or non-abstract in the context of specific cases, and that number is continuously growing…The USPTO, therefore, aims to clarify the analysis…”
The 2019 PEG rather cleverly attempts to synthesize a coherent Alice framework by incorporating various key Federal Circuit rulings. These include the Enfish, Bascom, Rapid Litigation, Mcro (Planet Blue), and Thales rulings that we discussed previously.
A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception…
If the recited exception is integrated into a practical application of the exception, then the claim is eligible at Prong Two of revised Step 2A. This concludes the eligibility analysis…
Integration into a practical application
The guide further teaches that examiners should consider the claim as a whole.
The examiners should also evaluate those additional elements individually and in combination to determine whether they integrate the exception into a practical application…
If the claim as a whole integrates the recited tentative abstract idea into a practical application, the claim is patent eligible.
This 2019 guidance somewhat reframes eligibility more in terms of the original (and in my opinion much better) “preemption” considerations. Hopefully, this will encourage examiners to stop rejecting otherwise good applications on dubious and subjective “not patent eligible” grounds.
The 2019 guidance is now an official part of MPEP 2106