Opinions and Legal Insights

New Patently-O Law Journal Essay: Parsing the Impact of Alice and the PEG

New Patently-O Law Journal Essay by Colleen V. Chien, Nicholas Halkowski, Maria He, and Rodney Swartz.

Abstract:

Almost two years have passed since the USPTO issued its January 2019 Patent Eligibility Guidance (PEG), itself a response to the Supreme Court’s Alice decision, and what many perceived as its destabilizing impact on the certainty of patent prosecutions. Leveraging new  data releases, we report on trends in prosecution following the USPTO’s PEG and the Guidance on 112, finding 1) a decline in subject matter rejections and stabilization of subject matter appeals, 2) no discernable increase in 112 rejections, 3) no evidence that small entities were being left behind in Alice-impacted art units by forum shopping by large entities, 4) no noticeable decline in “medical diagnostic” or “software” applications following Alice or Mayo, and 5) more unique words in issued patent claims post Alice. The scripts and techniques we developed to navigate data discontinuities and a lack of labels and complete our analysis are included in this essay.

Read the Essay at: Colleen V. Chien, Nicholas Halkowski, Maria He, and Rodney Swartz, Parsing the Impact of Alice and the PEG, 2020 Patently-O Law Journal 20.

Prior Patently-O Patent L.J. Articles: