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

Santa Clara Univ. Legal Studies Research Paper

26 Pages Posted: 12 Jan 2021

See all articles by Colleen V. Chien

Colleen V. Chien

Santa Clara University - School of Law; Stanford University - Department of Management Science & Engineering

Nicholas Halkowski

Wilson Sonsini Goodrich & Rosati

Maria He

Santa Clara University - Leavey School of Business

Rodney Swartz

Santa Clara University, School of Law

Date Written: November 2, 2020

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.

Keywords: patents, USPTO, Alice, patent prosecutions, patent eligibility guidance, patentable subject matter, empirical legal studies

JEL Classification: K20, L51, O31, O34

Suggested Citation

Chien, Colleen V. and Halkowski, Nicholas and He, Maria and Swartz, Rodney, Parsing the Impact of Alice and the PEG (November 2, 2020). Patently-O Law Journal, Nov. 2, 2020, https://patentlyo.com/patent/2020/11/patently-journal-parsing.html, Santa Clara Univ. Legal Studies Research Paper , Available at SSRN: https://ssrn.com/abstract=3726379

Colleen V. Chien (Contact Author)

Santa Clara University - School of Law ( email )

500 El Camino Real
Santa Clara, CA 95053
United States
408-554-4534 (Phone)
408-554-4426 (Fax)

Stanford University - Department of Management Science & Engineering ( email )

473 Via Ortega
Stanford, CA 94305-9025
United States

HOME PAGE: http://https://sites.google.com/view/colleenchien/

Nicholas Halkowski

Wilson Sonsini Goodrich & Rosati ( email )

650 Page Mill Rd
Palo Alto, CA 94304-1050
United States

Maria He

Santa Clara University - Leavey School of Business ( email )

500 El Camino Real
Santa Clara, CA California 95053
United States

Rodney Swartz

Santa Clara University, School of Law ( email )

500 El Camino Real
Santa Clara, CA 95053
United States

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