On October 17, 2019, the USPTO issued an update to the Patent Eligibility Guidelines (PEG) that came out in January 2019. The update seeks to clarify the 2019 PEG in response to public comments it received. The update provides additional guidance on how the USPTO determines whether a claim recites a judicial exception. Of particular note is the section addressing mental processes: “Claims do not recite a mental process when they do not contain limitations that can practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations.” This is encouraging for inventors whose inventions utilize a computer to perform certain processes. However, the USPTO also clarified that use of a generic computer can still be considered a mental process, and stated that “examiners may review the specification to determine if the underlying claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, 2) in a computer environment or 3)is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.”
It will be interesting to see what effect this update will have on the number of rejections under 35 USC 101 that are issued by the USPTO. The full text of the update can be found here.
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