On Thursday, October 17, the USPTO issued new patent eligibility guidance. The new guidance discusses and elaborates on the 2019 Revised Patent Subject Matter Eligibility Guidance (PEG) that was issued on January 7, 2019. The new guidance begins by stating that “all USPTO personnel are expected to follow the [PEG].” This statement is somewhat helpful given that some eligibility rejections still do not apply the PEG. After making the statement above, the guidance begins clarifying certain items from the PEG. In terms of Step 2A, Prong One regarding whether a claim “recites” a judicial exception, the guidance notes that a claim can recite more than one judicial exception. The judicial exceptions may be distinct in that there might be separate judicial exceptions in different claim elements. In other instances, there might be two judicial exceptions at play throughout the claim, in which case the examiner should identify the claim as reciting both and make the analysis clear on the record.
- A New Era of Copyright Litigation in Hollywood: Revisiting Pirates of the Caribbean One Year Later
- Federal Circuit Vacates TTAB Decision as Arbitrary and Capricious
- ‘I Want to Thank You’: Who and What IP Stakeholders are Giving Thanks for This Year
- SCOTUS Declines Solving Circuit Split on Awarding Avoided Costs in Trade Secret Cases
- Supreme Court Again Denies Inventor’s Bid to End Alice/Mayo