USPTO Delivers on Senators’ Request for Patent Eligibility Jurisprudence Study

In March of this year, a bipartisan group of senators asked Drew Hirshfeld, who is Performing the functions and duties of the Director of the U.S. Patent and Trademark Office (USPTO), to “publish a request for information on the current state of patent eligibility jurisprudence in the United States, evaluate the responses,” and provide the senators with a detailed summary of the findings in order to assist them as they consider appropriate legislative action. The letter gave a deadline of March 5, 2022 to submit a report on the topic.

Now, a Federal Register Notice (FRN) scheduled to be published July 9 is requesting answers and input from stakeholders to 13 questions/topics to assist in that effort, according to a publicly posted draft of the FRN.

How Has Eligibility Law Affected You?

The FRN includes questions such as:

• How does the current state of patent eligibility jurisprudence impact the conduct of your business; particular technological fields, investment and innovation in areas such as quantum computing, artificial intelligence, and precision medicine; and your experience with patent prosecution/ litigation/ R&D, etc.?
• How does your experience with U.S. patent eligibility jurisprudence compare to your experience with other jurisdictions?
• How has it affected your business strategy for protecting IP?
• How does the current state of U.S. patent eligibility jurisprudence affect the global strength of U.S. IP and the U.S. economy?

The FRN recaps the case law around patent eligibility jurisprudence since Bilski v. Kappos in 2010, ending with the still-pending petition to the U.S. Supreme Court in American Axle. It also asks commenters who are patent owners or inventors to provide “the number of U.S. and foreign patent applications you have filed; the number of U.S. and foreign patents you hold; the number of patents you have licensed or sold; and the number of patent cases you have been involved in since the Supreme Court’s decision in Bilski in 2010.”

Lack of Consensus

It is unclear what the outcome of such a study might be, but one of the authors of the March letter, Senator Thom Tillis (R-NC), led the charge in 2019 trying to reach agreement on reforms to Section 101/ patent eligibility law, ultimately declaring it “dead on arrival” without stakeholder consensus. “I’d encourage all stakeholders to work with Senator Coons and me to develop a consensus driven approach,” Tillis told the Intellectual Property Owners Association in January 2020. “If we’re going to get anything done on this issue, everyone will have to compromise.”

The biggest roadblock to consensus was on changes to 35 U.S.C. 112(f). Some stakeholders who wanted a legislative fix for 35 U.S.C. 101 were concerned that the proposed amendment to 112 would simply move rejections and invalidity arguments from 101 to 112. As a result, Tillis’ focus moved from patent reform to copyright reform last year, which culminated in a draft plan to reform the Digital Millennium Copyright Act (DMCA) in December 2020.

The March 2021 letter, and now this FRN, are the latest government activity on the topic. In the letter, the senators were particularly interested in “learning how the current jurisprudence has adversely impacted investment and innovation in critical technologies like quantum computing, artificial intelligence, precision medicine, diagnostic methods, and pharmaceutical treatments.”

Sequenced Patent Examination Pilot

Tillis and Senator Tom Cotton (R-AR) also sent another letter to Hirshfeld later in March 2021 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.”

The senators’ concern was 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.

Have Your Say

Comments are due 60 days from the date of publication of the FRN. According to the draft request for information:

Comments must be submitted through the Federal eRulemaking Portal at www.regulations.gov. To submit comments via the portal, enter docket number PTO-P-2021-0032 on the homepage and click “Search.” The site will provide a search results page listing all documents associated with this docket. Find a reference to this request for information and click on the “Comment Now!” icon, complete the required fields, and enter or attach your comments.

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