USPTO Commissioner for Patents on Life Five Years After Alice: We’ve Come a Long Way

By Eileen McDermott
June 24, 2019

“The market is telling us maybe it’s not quite as bad as we think—maybe we’ve found a way forward.” – Kent Richardson

Drew Hirshfeld

Panelists in this past Thursday’s IPWatchdog webinar, “Dissecting Alice,” gave credit to the U.S. Patent and Trademark Office (USPTO) for the steps it has taken to minimize the damage caused by the courts’ lack of action on patent eligibility, but expressed concern that it simply isn’t enough.

USPTO Commissioner for Patents Drew Hirshfeld joined the webinar to report on the progress made since the decision came out and said that, while Alice undoubtedly caused some confusion and disarray for practitioners, “we’re in a better place today than we were two or five years ago.” Hirshfeld explained that the Office’s initial approach to providing guidance for examiners on Alice was to use a “case law matching process,” which eventually became untenable after years of case law had built up. He said that the January 2019 Guidance—which Hirshfeld noted is also binding on the Patent Trial and Appeal Board—was developed over an intensive eight-month period by a small team of people that included Director Andrei Iancu himself and involved at least one full Sunday. He added that the examiner training effort for the 101 Guidance has also been more thorough than any he’s seen in his 25 years at the USPTO. The Office is currently in the process of developing additional concrete case examples for examiners and practitioners to work with in order to further enhance the guidance.

Despite the Office’s efforts, Iancu himself notably commented on June 19 that Congress is going to have to fix the problem.

Never Feel Comfortable

Russ Slifer

Russell Slifer

Russell Slifer, Principal at Schwegman Lundberg & Woessner and former USPTO Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director, commended Hirshfeld and the Office for the thoughtful and open process and for taking the lead on something Slifer said the courts should have. However, Slifer expressed concern that USPTO guidance for examiners is supposed to represent settled law, which he said Alice is clearly not. Pointing to the recent Cleveland Clinic and Chargepoint cases, Slifer said the Federal Circuit has clearly shown that it has no intention of using the approach outlined in the guidance, which means that patent owners should never feel comfortable that their granted patents are going to survive. Hirshfeld later took issue with this analysis. “I’m somewhat concerned when we say a single case overrides our guidance,” he said, adding that the Federal Circuit often disagrees with the Office on the proper application of the laws when assessing patents, but that does not usually change their practice.

Silver Linings

Kent Richardson

Kent Richardson

Meredith Addy of AddyHart P.C. and Kent Richardson of Richardson Oliver Law Group were also disturbed by the state of the law since Alice but found some hope.

Richardson said that the market is very adaptive and, despite the impact of Alice on software, “software patents still sell at the highest price. The market is telling us maybe it’s not quite as bad as we think—maybe we’ve found a way forward.”

Meredith Addy

Despite her deep distress over the Federal Circuit’s recent trend of issuing Rule 36 decisions on 101 cases—many of which she said involve good patents—and failing to provide clarity, Addy said that one positive result is that not as many patents include overly broad claims today, since applicants want a “more fleshed out patent.”  “That’s a positive,” she said.

Looking at the Numbers

Hirshfeld provided the stats below to show that 101 rejections have come down significantly across all areas since the January guidance, which the panelists were not surprised by, as all agreed the guidance is clear and provides consistency. The question seems to be whether those numbers matter.

“Great progress has been made [since Alice] in understanding and adapting, but without legislative intervention, we have another five years of uncertainty in front of us,” Slifer said.

Listen to the full webinar here.



The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of Read more.

Discuss this

There are currently 1 Comment comments.

  1. American Cowboy June 25, 2019 9:36 am

    Eileen and Gene, I must have let a bad word slip into a comment last week, and now I am barred from your esteemed blog — not even allowed to read it!

    Can I get released, please?