The United States Patent and Trademark Office (USPTO) has undertaken the difficult task of implementing several recent Supreme Court cases, which fundamentally changed what is eligible for patent protection. The USPTO initially issued new subject matter guidelines on March 4, 2014 after the Supreme Court handed down the Mayo and Myriad decisions. These earlier guidelines were met by an angry firestorm of opposition by the user community, who maintained the draft went further than the narrow holdings of the decisions being implemented and would irreparably harm U.S. companies and our economy.
In response to the uproar, the USPTO issued revised and much improved “interim” guidance that took into account an additional Supreme Court decision, CLS Bank v. Alice, relating to patent subject matter eligibility of business methods. The new guidance eliminated the unwieldy 12 factor test and made a number of other improvements in response to criticisms from the patent community.
The USPTO is to be applauded for listening to the user community and modifying the instructions. The Office has wisely referred to these new guidelines as “interim,” which seems to indicate they are planning on additional amendments and revisions to the guidelines.
That’s a good thing, because there seem to be a lot of inventors (and patent examiners) that are experiencing real difficulties in understanding how to apply the guidelines. Many of these issues can be traced back to the same root problem – the lack of clarity in defining what constitutes an “abstract idea.”
For example, the guidelines refer to “certain methods of organizing human activity” as a subcategory of abstract ideas. This phrase is derived from Bilski, which commented that “hedging is a longstanding commercial practice, …it is a method of organizing human activity not a ‘ truth’ about the natural world.” However, this passage in Bilski was merely responding to an argument made in the briefs, not announcing some new category of ineligible subject matter. Even if this language was based in case law, there is no articulation of what ‘certain methods’ are acceptable, and which are not.
Fundamentally, the problem is that there is no definition of (and arguably no case law basis for) the exclusion of “certain methods of organizing human activity.” No cases prohibit patenting a method of organizing human activity. Yet USPTO examiners are using the language in the guidance to deny patents on all types of claims related to the organization of human activity.
The diverse variety of claims that are receiving rejections based on the “certain methods of organizing human activity” illustrate the absence of any coherent understanding or definition of this phrase among the examining corps. In counseling clients on prosecution matters, I have encountered “organizing human activity” rejections for, inter alia, claims directed to a method for employing user-defined physical gestures to indicate that a data stream received by a device comprises speech input should be processed by its speech recognition engine. This claim doesn’t have any apparent relation to “organizing human activity,” but rather involves using user input to control a computing device. Nevertheless, the claim was rejected as directed to ‘a method of organizing human activities.’
Sadly, this is not an isolated case. I’ve seen similar rejections in a diverse (and utterly random) number of art areas and technologies ranging from predictive computer algorithms, to voice recognition technology, to methods for user-customization of advertising received on a device. While some of the rejected claims were arguably directed to an abstract idea, only a small minority had any apparent connection to “organizing human activity” as that phrase has been used in the case law.
Typically, this term has been used to describe non-technical methods involving economic and social activities involving human actors – e.g., computerized match-making on a dating site, strategies for hedging in commodities markets, or automated processes for reducing risk in executing financial transactions. Without clear guidance on the terms meaning, it has become untethered from its original meaning. This has resulted in some examiners interpreting it as a catch-all that enables rejection of any claim involving interaction with a human user, potentially encompassing everything from surgical techniques to methods of medical treatment to every-day activities like driving, using telecommunication devices, and food preparation.
Obviously, this was not the intent of the courts, as illustrated by a review of their decisions. Their rulings have carefully carved out a few narrow areas of abstract ideas that are critical to further innovation and that if made patent eligible, would otherwise pre-empt the building blocks of human ingenuity.
The Office’s use of “certain” correctly signals to examiners that not all such methods are ineligible. But the guidelines do not take the necessary step of telling examiners how to determine which methods are in and which ones are out. Examiners try to quickly get to the right decision in the limited time they have to fully review a patent application. These government officials focus on every word provided by upper management and look for any tool or rule to facilitate the examination process to handle the case as expeditiously as they can. With the language provided in the guidelines, examiners are quickly rejecting cases that meet the requirements of the Court because they wrongly think the Court banned patents in this area.
Upper management should again amend the instructions, staying within the narrow confines of the Court decisions, so that proper claims are neither delayed issuance or ultimately denied. Those amendments must address this confusion over “certain methods of organizing human activity.”
Given its questionable basis in the case law, the USPTO should delete this language from the guidance materials. It was never intended to be a threshold test by the Court. If the Office chooses to retain it, however, it is necessary to provide some sort of additional guidance to define what USPTO means by “certain methods of organizing human activity.” Currently, neither applicants nor examiners have any basis for understanding what these words are intended to mean.
I am confident that the management of the USPTO will be updating the guidance as new cases emerge from the courts and new problems are detected. I am well aware of the difficulties presented in changing the way over 8000 examiners handle these changes. Drawing upon my experience at the Office, my recommendation is for the USPTO to continue to make changes in practice very carefully and with frequent and repeated training opportunities to ensure the spirit and letter of the law are aligned.