Parsing the Impact of Alice and the PEG
Patently-O Law Journal, Nov. 2, 2020, https://patentlyo.com/patent/2020/11/patently-journal-parsing.html
26 Pages Posted: 12 Jan 2021
Date Written: November 2, 2020
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.
Keywords: patents, USPTO, Alice, patent prosecutions, patent eligibility guidance, patentable subject matter, empirical legal studies
JEL Classification: K20, L51, O31, O34
Suggested Citation: Suggested Citation