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VI. The Role Of Preemption, And The Streamlined Analysis

Clarification was requested about the role of preemption in the eligibility analysis, and suggestions were made as to where examiners should consider preemption, including in the streamlined analysis.

• After full consideration of the proposed alternatives, the current analysis as set forth in Steps 2A and 2B will be retained, since it already incorporates many aspects of preemption at a level that is consistent with the case law precedent.
  • Further, as suggested by many comments, the streamlined analysis will be retained, because it provides an important benefit to applicants and examiners by permitting claims whose eligibility is self‐evident to qualify as eligible without performing a full eligibility analysis.

The 2014 IEG Already Incorporates Preemption Where Appropriate.

• The Supreme Court has described the concern driving the judicial exceptions as preemption, however, the courts do not use preemption as a stand‐alone test for eligibility.
• Instead, questions of preemption are inherent in the two‐part framework from Alice Corp. and Mayo (incorporated in the 2014 IEG as Steps 2A and 2B), and are resolved by using this framework to distinguish between preemptive claims, and “those that integrate the building blocks into something more…the latter pose no comparable risk of pre‐emption, and therefore remain eligible”.
• It should be kept in mind, however, that while a preemptive claim may be ineligible, the absence of complete preemption does not guarantee that a claim is eligible.
• This principle is illustrated, e.g., by Example 8 (AI‐8:distribution of products over the Internet).

Streamlined Analysis.

For the convenience of examiners, the 2014 IEG presented a streamlined analysis that is available for claims that “clearly do not seek to tie up any judicial exception such that others cannot practice it.”

• The use of “tie up” refers to the results of Steps 2A and 2B, and is not meant to imply that the streamlined analysis is either a preemption test or a means of avoiding the results that would occur if a claim were to undergo the full eligibility analysis.
• In fact, the results of the streamlined analysis will always be the same as the full analysis, in that a claim that qualifies as eligible after Step 2A or Step 2B of the full analysis would also be eligible if the streamlined analysis were applied to that claim.
• E.g., if the streamlined analysis were applied to the claims in new Example 25 (rubber manufacturing), the end result of eligibility would be the same.
• A claim that does not qualify as eligible after Step 2B of the full analysis would not be suitable for the streamlined analysis, because the claim lacks self‐evident eligibility.
  • Thus, e.g., the streamlined analysis is not available for the claim in new Example 24 (updating alarm limits).
• It is also noted that because the result of employing the streamlined analysis is a conclusion that the claim is eligible, there will be no rejection of the claim on eligibility grounds, and thus the examiner will not need to indicate which analysis was used to reach the eligibility conclusion.
• Compare, e.g., Example 25 (rubber manufacturing), which illustrates how a hypothetical examiner would determine that the exemplary rubber manufacturing claims qualify as eligible in Step 2B of the full analysis, with Examples 26 (internal combustion engine) and 27 (system software – BIOS), which illustrate how a hypothetical examiner would determine that the exemplary claims qualify as eligible under the streamlined analysis.
• In practice, the record may reflect the conclusion of eligibility simply by the absence of an eligibility rejection or may include clarifying remarks, when appropriate.