“INSIGHT: Three Practice Tips Since USPTO Updated Its Subject Matter Eligibility Guidance”

November 27, 2019
Bloomberg Law

In an article published in Bloomberg Law on November 27, 2019, Partner Ryan N. Phelan breaks down the USPTO’s 2019 updated subject matter eligibility guidance and offers three practice tips for patent attorneys.

The 22-page update (October PEG update) does not change the 2019 PEG; however, it does provide three noteworthy clarifications as to its application and scope including to avoid ‘reciting’ a judicial exception, demonstrating an “improvement” to the claimed invention and determining whether the examiner sufficiently established a prima facie case.

To demonstrate an “improvement” to the claimed invention, “Patent applicants should describe an improvement in the specification that is specific to the functioning of a computer or an improvement to another technology or technical field. The improvement need not be an improvement over conventional technology. Rather an improvement regarding performance or memory usage of conventional computer is sufficient,” Phelan says.

Readers may access Mr. Phelan's article "INSIGHT: Three Practice Tips Since USPTO Updated Its Subject Matter Eligibility Guidance" on Bloomberg Law online.