TAKEAWAY: The October 2019 Patent Eligibility Guidance should sustain the trend of fewer eligibility rejections at the U.S. Patent Office.

In January 2019, the U.S. Patent Office (USPTO) released the now well-known Patent Eligibility Guidance (“2019 PEG”). The 2019 PEG substantially altered the way in which eligibility was evaluated by examiners and the Patent Trial and Appeal Board. The result was a substantial drop in eligibility rejections, and a welcomed increase in predictability. However, some clarity issues remained, and application of the 2019 PEG has not been uniform across the USPTO.

On October 17, 2019, a follow up was released responding to common confusions and concerns (“October Guidance”). While much of the October Guidance reiterates the 2019 PEG, it also provides some additional ammunition for practitioners. For example, it details further ways in which examiners may fail to establish a prima facie case.

Further, in the aftermath of the 2019 PEG, some examiners retained eligibility rejections by effectively “crossing off” limitations arguably directed to the identified abstract idea. The insubstantial remaining limitations would then be considered for a stunted “practical integration” analysis. The October Guidance specifically counsels against this behavior, saying that claims should not be “crossed off.” Specifically, the Guidance recites:

[The practical application] analysis considers the claim as a whole. That is, the limitations containing the judicial exception as well as the additional elements in the claim besides the judicial exception need to be evaluated together to determine whether the claim integrates the judicial exception into a practical application. The additional limitations should not be evaluated in a vacuum, completely separate from the recited judicial exception. Instead, the analysis should take into consideration all the claim limitations and how those limitations interact and impact each other when evaluating whether the exception is integrated into a practical application.

In short, while practitioners await rescue via legislative reform, the October Guidance should sustain the trend towards fewer eligibility rejections, while providing a few new tools for overcoming the rejections that remain.