Tillis and Cotton Urge Hirshfeld to Adopt Pilot Program to Address ‘Inherently Vague and Subjective’ Eligibility Analyses

By Logan Murr
March 23, 2021

“[B]y bringing claims into compliance with Sections 102, 103, and 112, examiners inevitably brought the claims into compliance with Section 101 as well.” – Senators Tillis and Cotton letter

https://depositphotos.com/7322225/stock-photo-incoming-letter.htmlSenators Thom Tillis (R-NC) and Tom Cotton (R-AR) sent a letter on Monday to the acting Director of the United States Patent and Trademark Office (USPTO), Drew Hirshfeld, asking him to “initiate a pilot program directing examiners to apply a sequenced approach to patent examination,” rather than the traditional “compact approach.” This proposed pilot program would require a select group of examiners and applicants who elected to participate in the program “to engage in a full examination of the grounds of patentability and then, once that process is complete, a full examination of the grounds of eligibility.”

Section 101 Scrutiny

The request to initiate the pilot program comes after a letter sent on March 5, 2021 by a bipartisan group of senators that requested Hirshfeld to “publish a request for information on the current patent eligibility jurisprudence in the United States,” and provide a detailed summary to the senators so that they could consider the appropriate legislative action to improve examination under Section 101. In both the March 5 letter and the most recent letter to Hirshfeld, the senators expressed their worry over Section 101 rejections stifling innovation. On March 5, the bipartisan group of senators noted that diagnostics, biopharmaceutical, and life science industries are particularly disadvantaged by the current Section 101 examination process, and in the midst of a global pandemic no less.

In the letter sent Monday, Senators Tillis and Cotton stated their “concern is that by conducting an eligibility analysis as per current practice, patent examiners may be issuing Section 101 rejections without the benefit of addressing prior art, clarity and enablement issues that may well inform the examiner that the claim is eligible under Section 101.” They added:

By conducting an inherently vague and subjective analysis of eligibility early in the examination process, examiners may be spending inordinate time on Section 101 at a time when it is difficult or impossible to conduct a meaningful examination under Section 101, at the expense of the more rigorous analysis and precise and thoughtful work that can be conducted at the outset of examination under Sections 102, 103, and 112.

A ‘Sequenced Approach’

The senators recognized that, unlike Section 101, which lacks “clarity, consistency, and objectiveness,” the examination “under Sections 102, 103, and 112 is based on well-developed objective criteria under the law.” The senators’ stated their belief, which is based on discussions with prior USPTO officials, that when applications are examined, “by bringing claims into compliance with Sections 102, 103, and 112, examiners inevitably brought the claims into compliance with Section 101 as well.” Senators Tillis and Cotton provided Hirshfeld with three reasons why this “sequenced approach” to examination may improve the examiners’ operating model:

“First, it focuses initial examination on the objective areas of patentability as opposed to the abstract, vague, and subjective questions of eligibility, leaving eligibility examination to a point in the process where it can be conducted much more efficiently.

Second, it improves efficiency by avoiding the waste of valuable examination and applicant time on vague questions of patent eligibility as a threshold matter.

Third, and finally, this process leads to stronger, more reliable, and higher quality patents by focusing first on the more rigorous and eas[ier] to identify standards of patentability.”

The senators emphasized that this new approach to examination would not diminish the examination of patent eligibility in any way, but rather, would allow that analysis to be conducted when it can be fully informed.

Measuring Success

Senators Tillis and Cotton set an April 20, 2021 deadline for Hirshfeld to decide whether to adopt the proposed pilot program. The senators also requested that the pilot program be conducted broadly enough so that a comparison may be made as to whether this proposed approach produces higher quality patents than the traditional compact examination approach. The senators noted that the proposed pilot program is part of a larger effort “aimed at improving the strength, predictability and reliability of our patent system.”

Image Source: Deposit Photos
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Copyright:auriso

The Author

Logan Murr

Logan Murr Logan is a 2L at UNH Franklin Pierce School of Law, where he serves as an Associate Editor of IDEA: The Law Review of the Franklin Pierce Center for IP. He is also the Director of Events for the Patent Law Forum on Campus. Before law school, Logan attended Susquehanna University where he studied Neuroscience. He plans to utilize his scientific and legal training to pursue a career in patent law.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com 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 IPWatchdog.com. Read more.

Discuss this

There are currently 19 Comments comments.

  1. Anon March 23, 2021 1:22 pm

    This is nothing more than a bad fig leaf.

    We don’t need this type of posturing from the people that have the actual authority to fix the mess the Supreme Court has made.

  2. anonymous March 23, 2021 1:52 pm

    Still a Band-Aid to fix a severed limb, Senators. Pushing an eligibility rejection until later in prosecution does nothing for those litigating patents issued 5 or 10 years ago. Innovation is bleeding out in the courtroom.

    “Abstract idea” cannot be defined by any examiner or court. The Emperor Has No Clothes. SCOTUS won’t grant cert and only Congress can fix the problem.

    Please fix 101 without further delay, Congress.

  3. Curious March 23, 2021 2:22 pm

    A bit of window dressing and PR move, but I’ll endorse it. Anything that raises awareness of the FACT that “Section 101 … lacks ‘clarity, consistency, and objectiveness'” is a good thing.

  4. Concerned March 23, 2021 4:43 pm

    My rejected patent application has no 102, 103 or 112 issues.

    Regarding Section 101, the USPTO keeps changing arguments as to why it rejects under Section 101. I will probably end up with 101 different reasons of Section 101 rejections.

    Some people think the USPTO is hoping I will just go away and abandon the application.

    The USPTO is not that lucky. I want them to put in writing why a new and useful process that solved a 60 year problem (undisputed) cannot get a patent.

  5. Josh Malone March 23, 2021 7:09 pm

    @Concerned – why are you so determined to get a patent? The PTAB will take it back if you ever try to use it.

  6. BP March 23, 2021 8:13 pm

    The process is working as planned, a whole bunch of non-attorney examiners that have little/lesser training and experience on 103. Training on 101 was a huge waste of time and applicant fees. As a result, we have poorer quality now.

    Director Lee had wanted such waste and chaos (take fees and confound examination while training examiners on worthless garbage). Funny how her old boss is now pretend crying for eligibility on AI under the guise of national security.

  7. Pro Say March 23, 2021 9:36 pm

    “[B]y bringing claims into compliance with Sections 102, 103, and 112, examiners inevitably brought the claims into compliance with Section 101 as well.”

    Jackpot, Senators. Jackpot.

    . . . now . . . about what American desperately needs (and China hopes you never do) . . . a new bill to regain that which SCOTUS and the CAFC usurped from you . . . by restoring eligibility to ALL areas of innovations . . . doing so without adding new, unnecessary requirements.

  8. Night Writer March 24, 2021 9:49 am

    @6 BP >>Training on 101 was a huge waste of time and applicant fees. As a result, we have poorer quality now.

    This is exactly right. 101 is complete nonsense as practiced by the CAFC.

  9. TFCFM March 24, 2021 10:00 am

    The suggestion appears to be self-contradictory on its face:

    Article: “Senators Thom Tillis (R-NC) and Tom Cotton (R-AR) sent a letter on Monday to the acting Director of the United States Patent and Trademark Office (USPTO), Drew Hirshfeld, asking him to “initiate a pilot program directing examiners to apply a sequenced approach to patent examination,” rather than the traditional “compact approach.”

    But:

    Article: “Senators Tillis and Cotton stated their “concern is that by conducting an eligibility analysis as per current practice, patent examiners may be issuing Section 101 rejections without the benefit of addressing prior art, clarity and enablement issues that may well inform the examiner that the claim is eligible under Section 101.”

    Under a ‘compact prosecution’ approach, Examiners are supposed to consider ALL of sections 101, 102, 103, and 112. Playing “three monkeys” (hear no evil, see no evil, speak no evil) on section 101, at least in a first office action, will not cause patent examiners to “do more thinking” about 102, 103, and 112, but will instead merely lengthen prosecution (“until I, your examiner, am allowed to make the rejection your claims so richly deserve”) and increase costs for both applicants and the USPTO, if anything.

    REQUIRING an examiner to keep an eligibility rejection in his or her back pocket (either only-initially or only-until-102/103/112-issues-are-exhausted) will double or triple examination time and effort: knowing that (s)he has a 101 rejection “in reserve,” an examiner will not spend so much effort considering-and-supporting 102/103/112 rejections. If those rejections are overcome, prosecution will re-start with the now-available 101 rejection. Only if that 101 rejection is overcome (by argument or appeal) will the examiner turn to “genuinely” examine 102/103/112.

    I applaud the effort to think of a better procedure, but this seems to be clearly “not an improvement.”

  10. Anon March 24, 2021 10:46 am

    Night Writer,

    I am NOT telling you what to write about, but your myopia about the CAFC is creating the impression that you do not understand that the focus of discussion is on items within the Patent Office.

    This is coming from one that agrees in large part with your view of the mess of the CAFC.

  11. Curious March 24, 2021 11:48 am

    REQUIRING an examiner to keep an eligibility rejection in his or her back pocket (either only-initially or only-until-102/103/112-issues-are-exhausted) will double or triple examination time and effort
    No. Once 102/103/112 has been overcome and should a 101 rejection subsequently be made, addressing the 101 rejection can be quite easy. How do I know this? Because I’ve seen it done. If the Examiner is so inclined (although not all are), a patent practitioner can reach out to them and ask them what he/she needs to see in the claims to overcome the 101 rejection.

    I have found that different art units want to see different things (i.e., some art units like some things better than others). If such a pilot program is to be run, I would hope that part of the program would involve (again, should a 101 rejection be necessary) a mandatory post-101 interview in which the Examiner would provide helpful suggestions as to overcome a 101 rejection.

    One of the problems I currently see is that some Examiners (particularly in the art units in which 101 rejections are prevalent) are spending far more time addressing 101 than they are 102/103/112, which appear to be getting short shrift.

    Whether what the Examiner proposes (in order to get around 101) actually survives in Federal Circuit is another issue altogether. As most here already know (except for at least TFCFM), the Federal Circuit has created a contradictory, unworkable, and indecipherable regime in terms of how to determine whether something passes 101 or not.

  12. Pro Say March 24, 2021 7:00 pm

    I’m with Curious. Let’s give it a try and see what happens. We need to ask ourselves this:

    How could the 101 morass be any worse than it is now?

    The CAFC doesn’t give a d.a.m.n. what the PTO does re 101 anyway.

    So the PTO might as well try to do what’s best for innovation (and our Constitution); even if the CAFC and SCOTUS won’t.

  13. Night Writer March 25, 2021 7:15 am

    @10 Anon

    Anon, no. I am sorry you don’t understand that the CAFC jurisprudence is why it is so hard to examine patent applications.

  14. TFCFM March 25, 2021 9:08 am

    Curious@#11: “Once 102/103/112 has been overcome and should a 101 rejection subsequently be made, addressing the 101 rejection can be quite easy. How do I know this? Because I’ve seen it done. If the Examiner is so inclined (although not all are), a patent practitioner can reach out to them and ask them what he/she needs to see in the claims to overcome the 101 rejection.

    Surely so. But this is AT LEAST equally so under the current procedure. Nothing about an “examiner’s aren’t allowed to ACTUALLY SAY 101 until later” system would change this fact — only delay it.

    Far better, it seems to me, that examiners put all of their objections on the table up front than that they have certain shibboleths that they’re not “allowed” to say until later.

    The shortcoming is with applicants who either are unwise, or are represented by the unwise, those unwise being unable to fathom (or, at least, accept) the reality that disclosing an invention that accomplishes a goal does not entitle the discloser to foreclose all inventions that accomplish that same goal.

    Forcing examiners to do more work to reject claims that are properly rejected (even if properly rejected on multiple grounds) merely detriments the efficiency of patent examination for ALL applicants, rather than focusing the inefficiency on the practitioners and applicants whose poor/dishonest grasp of patent eligibility is causing the perceived-“problem.”

  15. Anon March 25, 2021 10:54 am

    Night Writer,

    You missed the point.

    This is not about understanding the damage wrought by the CAFC.

    I fully “get” that. I have often posted in agreement with you on that point.

    To say that I don’t understand that which I agree with is a bit asinine on your part.

    I have also made it an ongoing point that Patent Profanity is created by the judicial branch.

    Again, NOT the point being presented to you.

    The explicit point is that HERE and NOW the discussion is just not about the CAFC and is instead about the different branch of the government and what that branch may or may not do in response to the mess created by the judicial branch.

  16. ipguy March 26, 2021 2:42 pm

    For a long time, PTO Management was in denial that Office Actions were being sent out with only 101 rejections or that 101 rejections were being made that were directed to dependent claims but not the independent claims they depended from.
    PTO Management’s disconnect from what Examiners are actually doing is a major root cause for persistent dysfunction in the Examining Corps.

  17. Anon March 26, 2021 4:22 pm

    ipguy,

    I would add that there are significant “fiefdom” effects from various levels between newbie examiners (doing the exact bidding of their supervisory examiners) up to and including Technical Art Unit directors who have made up their minds as to what any “message from above” really means.

  18. concerned March 27, 2021 5:54 am

    Anon @17:

    My first examiner told me the rejection was from above, that he saw patentability. Then a different examiner was assigned.

    I hope the first examiner asked to be dismissed from my application as then I could say there was some intregity in the process.

  19. ipguy March 29, 2021 4:08 pm

    @18
    It’s hard to know why applications get transferred to another examiner. Sometimes because an Examiner quits, sometimes because they got detailed to another area of the PTO (e.g., petitions office), but it’s not something that will likely find its way into the official record. I got lucky once when an examiner who refused to budge got detailed elsewhere and a new primary took over the application and allowed it with a very minor Examiner’s Amendment.
    An Assistant Examiner (aka Junior Examiner) may see patentability where their supervisor does not. The most worthless interviews are with Assistant Examiners where the SPE on the call believes their job is to back up the Assistant Examiner no matter what (mainly because a poor Office Action is more of a reflection of their poor supervisory skills than anything else).