What is the role of preemption in the subject matter eligibility analysis?
While preemption is not a standalone test for eligibility, it remains an underlying concern in the subject matter eligibility analysis. The MPEP explains:
“If applicant argues that the claim is specific and does not preempt all applications of the exception, the examiner should reconsider Step 2A of the eligibility analysis, e.g., to determine whether the claim is directed to an improvement to the functioning of a computer or to any other technology or technical field. If an examiner still determines that the claim is directed to a judicial exception, the examiner should then reconsider in Step 2B whether the additional elements in combination (as well as individually) amount to an inventive concept, e.g., because they are more than the non-conventional and non-generic arrangement of known, conventional elements.”
Examiners should consider preemption concerns when evaluating whether claims are directed to an abstract idea and whether they amount to significantly more than the judicial exception.
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